UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/11/2018

 

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

ISSUES APPLICANT MUST ADDRESS:  On VENUS GRIFFITH TRUNNEL, the trademark examining attorney and April 11, 2018 discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

Identification and Classification of Goods and Services

 

The identification of goods in Classes 08, 18, 26 are accepted as written.

 

The identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Some of the wording in the identification of goods and services are indefinite and must be clarified.  See suggestions below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate: 

 

Class 03:  Beauty and cosmetics, namely, essential oils; bath lotions, gels and oils; toilet soaps; skin moisturizing lotions; cosmetic creams, cleansing milks and cosmetics, pomades for cosmetic purposes; nail varnishes, nail emery boards; suntan creams; body gels for cosmetic purposes; shampoos

 

Class 06:  Metal hooks, namely, over the door hooks of metal

 

Class 08:  Tweezers; eyelash curlers; nail files and clippers; nail scissors and cuticle trimmer; Bags specially adapted for holding or carrying hair cutting scissors and shears, electric hair curling irons

 

Class 09:  Downloadable ring tones via the internet and wireless devices; Bags specially adapted for eyewear

 

Class 11:  Bags specially adapted for holding or carrying hand-held electric hair dryers

 

Class 12:  Bag saver in the nature of plastic bag holders adapted for use in vehicles

 

Class 14:  Jewelry bags specially adapted for jewelry storage

 

Class 16:  Merchandise bags

 

Class 20:  Mirrors, namely, vanity mirrors; Hangers; Over the door hooks of non-metal; Mirrors

 

Class 21:  Caddies for holding cosmetics for household use; Bread boxes; Caddies for holding cutlery for household use; Bag saver in the nature of plastic bag holders for household use; Trivets; Dish drying racks and dish drainers; Canister sets; Salad spinners; Caddies for holding hair accessories for household and domestic use

 

            Merchandise bags are in Class 16.

 

Class 22:  Packaging bags of textile material; Textile bags for merchandise packaging; Garment bags for storage; Shoe bags for storage; Jewelry bags for storage; Eyewear bags for storage or protection; Hair accessories bags for storage

 

Jewelry bags are just like “jewelry boxes”—same function of storage in Class 14.  Eyewear cases, bags, etc., would belong in Class 09 regardless of portability or long term storage.  Hair accessories bag for particular hair items belong in Classes 8 or 11.  The wording “protection” should be deleted because it could denote goods in other classes.

 

Class 26:  Non-electric hair rollers; Hair accessories, namely, twisters

 

Class 32:  Beers; mineral water, still water, spring water, aerated and carbonated waters; drinking water with vitamins, mineral or herb base; energy drinks enhanced with vitamins, mineral or herb base; non-alcoholic water-based beverages with tea extracts; flavoured water, treated drinking water, non-alcoholic water-based beverages also containing fruit and/or fruit flavoured; fruit juices and vegetable juices, fruit nectars, lemonades, soda water, syrups and other non-alcoholic preparations for making non-alcoholic [specify, e.g., fruit] beverages and aerated water; isotonic beverages; non-alcoholic energy drinks, non-alcoholic aperitifs, non-alcoholic cocktails; pastilles and powders used in making non-alcoholic effervescent beverages, namely, [specify, e.g., sports beverages]

 

Class 35:  Advertising services, in particular by means of advertorial advertising for others, by means of co-branding concept, imagery and development, by means of the dissemination of advertising display stands, placards and printed and electronic promotional media for the promotion of miscellaneous goods and services in the fields of slimming products, food supplements, services for providing food and drink, table linen and tableware, household linen, landscaping, tourism, travel arrangement and organizing holidays, organization of events in the field of theatre, digital images and sounds, games, toys and sport, sports activities and competitions, of new technologies, goods related to computers, robotics, home automation, finance, mutual assistance services; commercial information and consulting services in relation to sale and promoting of various goods and services in particular in the fields of digital images and sounds, games, toys, automobiles and sport, sports activities and competitions, of new technologies, goods related to computers, telephony, robotics, home automation, finance, mutual assistance services; services provided by a franchiser, namely, assistance in the operation or management of commercial companies; data entry and processing services, namely, computer data entry, data systematization of information into computer databases, computerized file management; sales promotion services, commercial referral services, promotional sponsorship, co-branding concept, imagery and development and campaigns of promotional information concerning various goods and services in the fields of digital images and sounds, games, toys, automobiles and sport, sports activities and competitions, of new technologies, goods related to computers, telephony, robotics, home automation, finance, mutual assistance services; providing television home shopping services in the field of general consumer merchandise; mail order catalog services, retail store services and online retail store services featuring a wide variety of goods and services especially in the fields of fashion, clothing, fashion articles and fashion accessories, leather goods and luggage, beauty and hygiene, cosmetics, soaps, perfumery, essential oils, hygiene preparations, toilet articles, infant care, food, dietetic preparations and slimming products, food supplements, gastronomic products, including wines and alcohol, the fitting out of interiors and exteriors, table linen and tableware, household linen, decorative objects, furniture, electronic and electric household appliances, computer and electronic goods, TV sets, Hi-Fi sets, video sets, telephony, robotics, home automation, sport articles, games and toys, printed matter;

 

Delete below as it appears to be duplicate wording

mail order services, retail store services and on-line retail store services featuring various goods and services especially in the fields of fashion, clothing, fashion articles and fashion accessories, leather goods and luggage, beauty and hygiene, cosmetics, soaps, perfumery, essential oils, hygiene preparations, toilet articles, infant care, food, dietetic preparations and slimming products, food supplements, gastronomic products, including wines and alcohol, the fitting out of interiors and exteriors, table linen and tableware, household linen, decorative objects, furniture, electronic and electric household appliances, computer and electronic goods, TV sets, Hi-Fi sets, video sets, telephony, robotics, home automation, sport articles, games and toys and printed matter

 

Additions to Identification Not Permitted

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e). 

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Section 1(b) Requirements for Combined Applications

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 15 classes; however, applicant submitted a fee(s) sufficient for only 12 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Class Fees

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/William T. Verhosek/

William T. Verhosek

Examining Attorney

U.S. Patent & Trademark Off

LO 114/571-272-9464

william.verhosek@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/11/2018 FOR U.S. APPLICATION SERIAL NO. 87739201

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/11/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.