UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 3/10/2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on February 5, 2018.

 

In a previous Office action dated August 7, 2018, applicant was required to satisfy the following requirement: amend the identification of goods and/or services.

 

In its response, applicant submitted an amended identification.  Based on applicant’s response, specific wording in the amended identification is beyond the scope of the original application and therefore cannot be accepted.  As a result, portions of the original identification that require clarification will be restored.  Additionally, applicant’s amended identification contains indefinite language that must be further clarified.  Accordingly, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Partial Requirement – Amend Identification of Specified Goods and Services

 

PARTIAL REQUIREMENT – AMEND IDENTIFICATION OF SPECIFIED GOODS AND SERVICES

 

In the previous Office action, applicant was required to amend all indefinite language provided in its identification of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01.  In its response, applicant submitted an amended identification that exceeds the scope of the original application and/or is indefinite and required clarification.  Accordingly, for the reasons set forth previously and below, the requirement to amend the identification of goods and services is now made FINAL with regard to specific wording in the identification of goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01

 

International Class 3

 

The wording “facial sheet mask with non-medicated serum; neck sheet mask” is indefinite and must be clarified because the nature of the goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, use of the wording “facial sheet” and “neck sheet” to describe the “mask” goods renders the type of goods unclear.  Additionally, the wording “non-medicated serum” fails to sufficiently indicate the type of “serum”.  Thus, for each entry containing this wording, applicant must amend the identification to clarify the type of goods and/or their nature using common commercial terms for the goods.

 

The wording “non-medicated cleanser; non-medicated mask” is indefinite and must be clarified because the type of goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Thus, for each entry containing this wording, applicant must amend the identification to clarify the type of goods using common commercial terms for the goods.

 

The wording “non-medicated neck mask with non-medicated serum” is indefinite and must be clarified because it fails to sufficiently indicate the type of “serum”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Thus, for each entry containing this wording, applicant must amend the identification to clarify the type of “serum” goods using common commercial terms for the goods.

 

The wording “body polish packaged with body non-medicated serum” is indefinite and must be clarified because the wording “body non-medicated serum” renders the nature of the “serum” unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Thus, applicant must amend the identification to clarify the type and/or nature of the “serum” goods using common commercial terms for the goods.

 

The wording “skin scrub/polish” is indefinite and must be clarified because the nature of the goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, applicant’s use of the forward slash symbol (“/”) is improper use of punctuation as discussed in detail below.  Furthermore applicant’s use of the forward slash symbol renders it unclear as to whether applicant intends to offer two distinct goods, i.e., skin scrubs and skin polish.  Thus, applicant must amend the identification to clarify the nature of the goods and/or their purpose using common commercial terms for the goods.

 

Additionally, when amending the identification, applicant must also remove any use of the forward slash symbol (“/”) or other improper punctuation.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use symbols in the identification such as asterisks (*), forward slash (/), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The wording “skin mist” is indefinite and must be clarified because the nature of the goods and/or their purpose remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Thus, applicant must amend the identification to clarify the type of goods and/or their purpose using common commercial terms for the goods.

 

The wording “lip scrub packaged with lip sheet mask with non-medicated serum” is indefinite and must be clarified because the type and nature of the goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, use of the wording “lip” and “lip sheet” to describe the “scrub” and “mask” goods renders the type of goods unclear.  Additionally, the wording fails to sufficiently indicate the type of “serum”.  Thus, applicant must amend the identification to clarify the type of goods and/or their nature using common commercial terms for the goods. 

 

Finally, applicant is advised to delete or modify the duplicate entries in the identification of goods in International Class 3 for “non-medicated facial sheet mask with non-medicated serum; non-medicated facial mist.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

International Class 40

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the services as follows:  “contract manufacturing in the field of skin and body care; private label manufacturing in the field of skin and body care”.

 

However, the proposed amendment identifies the following goods and/or services:  “Contract manufacturing in the field of … cosmetics; private label manufacturing services for others in the field of … cosmetics”. 

 

This portion of the proposed amendment is beyond the scope of the original identification because it identifies cosmetics as a distinct field of use for the services and this field was not identified in the original application.  Applicant should be aware that its use of a comma in its amended identification serves to indicate a distinction between different fields of use, i.e., skin and body care and cosmetics are two different fields of use because applicant separates them in the identification with a comma.  Applicant’s original identification limited the field of use for the services to “skin and body care” and “cosmetics” includes goods such as make-up that are not a type of skin and body care and thus are considered beyond the scope of the original application. 

 

Therefore, the application will proceed with the services identified as follows:

 

International Class 40: Contract manufacturing in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care; private label manufacturing services for others in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care.

 

Additionally, the wording “contract manufacturing in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care; private label manufacturing services for others in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care” remains indefinite and must be clarified because it does not sufficiently identify the field of goods being manufactured.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, wording such as “skin and body care” and “anti-aging skincare” does not describe a category of specific goods such as “cosmetics” or “creams”.  For manufacturing services, the category or type of goods being manufactured must be clearly and explicitly stated.  Thus, applicant must amend the identification to clarify the field of use for the services by specifying the nature of the goods applicant manufactures.

 

Applicant may adopt the following wording, specified in bold, if accurate:

 

International Class 3: Private label cosmetics; anti-aging skin care products, namely, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial sheet mask being facial masks and featuring non-medicated skin serum, non-medicated facial mist, non-medicated facial cleanser, non-medicated cosmetic mud mask, and non-medicated neck mask featuring non-medicated skin serum; anti-pollution skin care products, namely, skin cleansing lotions, skin softeners, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial sheet mask being facial masks and featuring non-medicated skin serum, non-medicated facial mist, lotion, non-medicated facial cleanser, non-medicated cosmetic mud mask, non-medicated neck mask featuring non-medicated skin serum; anti-oxidant skin care products, namely, skin cleansers, skin creams, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial sheet mask being facial mask and featuring non-medicated skin serum, non-medicated facial mist, non-medicated facial cleanser, non-medicated cosmetic mud mask, non-medicated neck sheet mask being neck mask featuring non-medicated skin serum; natural skin care products, namely, skin texturizers, skin emollients, skin cleansers, skin lotions, skin serum, skin scrub being cosmetic body scrub for the [specify, e.g., face, feet, hands, etc.], skin care preparation being body polish, skin softeners, skin mist being non-medicated body mist; skin cleansers; skin care preparations, namely, skin scrubs; skin masks; multi-step skin care preparations, namely, facial scrub packaged with facial moisturizer, body polish packaged with non-medicated skin serum for the body, body polish packaged with body spray, cosmetic body scrubs for the lips packaged with lip sheet mask being lip mask featuring non-medicated skin serum; non-medicated hair conditioning treatments for cosmetic purposes; hair moisturizing preparations; cosmetic masks, namely, lip masks; cosmetic body scrubs for the lips; facial beauty masks; pre-moistened cosmetic facial wipes; body lotions; non-medicated skincare preparations, namely, hand moisturizing treatment creams, foot moisturizing treatment creams, and skin cleansing oils.

 

International Class 40: Contract manufacturing in the field of skin and body care cosmetics, namely, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, and natural body care cosmetics; private label manufacturing services for others in the field of skin and body care cosmetics, namely, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, and natural body care cosmetics.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

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.  

 

 

PROPER RESPONSE TO FINAL ACTION FOR PARTIAL REQUIREMENT

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final requirement apply will be deleted from the application by Examiner’s Amendment: 

 

International Class 3: Anti-aging skin care products, namely… facial sheet mask with non-medicated serum, non-medicated cleanser, non-medicated mud mask, non-medicated neck mask with non-medicated serum; anti-pollution skin care products, namely, facial sheet mask with non-medicated serum, non-medicated cleanser, non-medicated mud mask, non-medicated neck mask with non-medicated serum; anti-oxidant skin care products, namely, …. facial sheet mask with non-medicated serum, non-medicated cleanser, non-medicated mud mask, non-medicated neck sheet mask with non-medicated serum; natural skin care products, namely … skin scrub/polish, skin mist; multi-step skin care preparations, namely… body polish packaged with body non-medicated serum, lip scrub packaged with lip sheet mask with non-medicated serum”. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

International Class 40: Contract manufacturing in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care; private label manufacturing services for others in the field of skin and body care, anti-aging skincare, anti-aging body care, anti-pollution skincare, antipollution body care, natural skincare, natural body care.

 

The application will then proceed for the following goods: 

 

International Class 3: Private label cosmetics; anti-aging skin care products, namely, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial mist; anti-pollution skin care products, namely, skin cleansing lotions, skin softeners, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial mist, lotion; anti-oxidant skin care products, namely, skin cleansers, skin creams, non-medicated skin serum, non-medicated skin lotion, non-medicated skin cleanser, non-medicated mud facial mask, non-medicated facial mist; natural skin care products, namely, skin texturizers, skin emollients, skin cleansers, skin lotions, skin serum, skin softeners; skin cleansers; skin care preparations, namely, skin scrubs; skin masks; multi-step skin care preparations, namely, facial scrub packaged with facial moisturizer, body polish packaged with body spray; non-medicated hair conditioning treatments for cosmetic purposes; hair moisturizing preparations; cosmetic masks, namely, lip masks; cosmetic body scrubs for the lips; facial beauty masks; pre-moistened cosmetic facial wipes; body lotions; non-medicated skincare preparations, namely, hand moisturizing treatment creams, foot moisturizing treatment creams, and skin cleansing oils.

 

Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@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 3/10/2019 FOR U.S. APPLICATION SERIAL NO. 87944392

 

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 3/10/2019 (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.