To: | Jeffree Star Cosmetics LLC (docketing@mwzb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87074437 - JJ - JEFFREE-0011 |
Sent: | 9/30/2016 4:18:22 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87074437
MARK: JJ
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Jeffree Star Cosmetics LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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.
ISSUE/MAILING DATE: 9/30/2016
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 September 25-26, 2016, the trademark examining attorney and Mr. Jeffrey Smith discussed the issues below, but they have been slightly modified 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.
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 $50 per international 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 without incurring this additional fee.
Search Results Advisory
Note: This is merely an advisory paragraph and not a requirement.
The trademark examining attorney has searched the Office’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).
PARTIAL Identification of Goods and/or Services Amendment Requirement
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The wording “Clothing including . . .” in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. See TMEP §§1402.01, 1402.03. Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969). Also, the wording is also indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods and must be all-inclusive. See TMEP §1402.03(a). Please see non-exhaustive suggestions below.
The current identification reads as follows:
International Class 3: (Based on Use in Commerce) Cosmetics; Make-up; Make-up powder; Eye shadow; Face powders; Non-medicated lip care preparations; Lip repairers, Lip polishers; Lipsticks; Liquid lipsticks; Non-medicated lip scrubs; Compacts containing make-up; Cosmetic preparations; Cosmetics, namely, facial highlighters
International Class 25: (Based on Use in Commerce) Jackets; Vests; (Based on Intent to Use) Clothing including shirts, t-shirts, pants, socks; Lingerie, Sleepwear; Footwear; Headwear
The following wording in the current identification is acceptable, because it is sufficiently definite and properly classified:
International Class 3: (Based on Use in Commerce) Cosmetics; Make-up; Make-up powder; Eye shadow; Face powders; Non-medicated lip care preparations; Lip repairers, Lip polishers; Lipsticks; Liquid lipsticks; Non-medicated lip scrubs; Compacts containing make-up; Cosmetic preparations; Cosmetics, namely, facial highlighters
International Class 25: (Based on Use in Commerce) Jackets; Vests; (Based on Intent to Use) . . . shirts, t-shirts, pants, socks; Lingerie, Sleepwear; Footwear; Headwear
Applicant may adopt the following identification of goods and/or services, if accurate (PLEASE SUBMIT YOUR AMENDED IDENTIFICATION IN STANDARD FONT; THE FONT STYLIZATION BELOW IS TO EMPHASIZE THE RECOMMENDED CHANGES ONLY):
International Class 3: (Based on Use in Commerce) Cosmetics; Make-up; Make-up powder; Eye shadow; Face powders; Non-medicated lip care preparations; Lip repairers, Lip polishers; Lipsticks; Liquid lipsticks; Non-medicated lip scrubs; Compacts containing make-up; Cosmetic preparations; Cosmetics, namely, facial highlighters
International Class 25 9: (Based on Intent to Use)
Clothing including, namely, {insert common commercial names of clothing in this class, e.g., “bullet-proof clothing” and/or “clothing for protection against fire”, or delete}
International Class 25 18: (Based on Intent to Use)
Pet Clothing
International Class 25: (Based on Use in Commerce) Jackets; Vests; (Based on Intent
to Use) Clothing including, namely, shirts, t-shirts, pants, socks [can add more common commercial names of clothing in this class in this list]; Lingerie, Sleepwear;
Footwear; Headwear
International Class 25 28: (Based on Intent to Use)
Doll Clothing
See TMEP §1402.01.
Amendment Guidelines
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 2 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
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); TMEP §820.03. For 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 by TEAS and in a paper submission, please go to http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h).
International Class 3: (Based on Use in Commerce) Cosmetics; Make-up; Make-up powder; Eye shadow; Face powders; Non-medicated lip care preparations; Lip repairers, Lip polishers; Lipsticks; Liquid lipsticks; Non-medicated lip scrubs; Compacts containing make-up; Cosmetic preparations; Cosmetics, namely, facial highlighters
International Class 25: (Based on Use in Commerce) Jackets; Vests; (Based on Intent to Use) . . . shirts, t-shirts, pants, socks; Lingerie, Sleepwear; Footwear; Headwear
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
If applicant wants to limit this case to any 2 of the above suggested class(es), applicant is encouraged to email or telephone the assigned trademark examining attorney to resolve the issue(s) raised in this Office action.
Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.
/Tina H. Mai/
Trademark Examining Attorney
Law Office 117
571-272-4110
tina.mai@uspto.gov (for informal communications)
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.