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: 8/7/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

SUMMARY OF ISSUES:

• Requirement – Amend Identification and Classification of Goods and Services

 

 

 

REQUIREMENT – AMEND IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

For the reasons set forth below, the identification must be clarified because of use of improper punctuation and unacceptably indefinite language that is also misclassified.

 

First, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and services.  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). 

 

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. 

 

Second, for the reasons discussed further below, the identification is unacceptably indefinite.

 

The wording “contract manufacturing in the field of skin and body care; private label manufacturing in the field of skin and body care” is indefinite and must be clarified because it fails to make clear the nature of the goods applicant manufactures.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to clarify the field of use for the goods by indicating in greater detail the nature of the goods applicant manufactures.  Additionally, applicant must also amend the wording “private label manufacturing…” to clarify that it provides a service.  Thus, applicant must incorporate the wording “services” and “for others” to clarify that applicant provides a service.

 

The wording “anti-aging skin care products; anti-pollution skin care products; anti-oxidant skin care products; natural skin care products” is indefinite and must be clarified because it fails to indicate specific items.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, applicant uses the indefinite wording “products”; such wording must be followed by “namely,” and a list of each specific product using the common generic name for each product or a description of the nature, purpose and/or intended use of each product.

 

The wording “skin scrubs” is indefinite and must be clarified because it fails to indicate the category for the goods with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to clarify the type of goods and the part of the body for which the goods are intended.

 

The wording “multi step skin care” must be clarified because it is indefinite and too broad and could include goods and/or services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because the nature of the goods and/or services remains unclear.  Additionally, this wording could encompass non-medicated skin care preparations classified in International Class 3, medicated skin care preparations classified in International Class 5, or skin care services classified in International Class 44.  Thus, applicant must amend the identification to clarify the nature of the goods and/or services.  If applicant intends to offer goods, applicant must indicate the category for the goods and specific items using common generic names for the goods.  Further, if applicant’s goods are medicated, applicant must specifically reference the term “medicated” in its identification.  Finally, if applicant intends to offer services, applicant must incorporate the wording “services” into the identification and specify the type of goods in greater detail.

 

The wording “hair conditioning treatments, moisturizers” must be clarified because it is indefinite and too broad and could include goods in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because it fails to indicate the category for the goods and/or their purpose with sufficient specificity.  Additionally, this wording could encompass non-medicated hair treatment and moisturizer preparations classified in International Class 3, and medicated balms or serums for hair treatment and medicated moisturizers classified in International Class 5.  Thus, applicant must amend the identification to further clarify the type of goods, their purpose and whether they are medicated or non-medicated. 

 

The wording “face masks; lip masks” must be clarified because it is indefinite and/or too broad and could include goods in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because it fails to sufficiently indicate the type of goods and their purpose.  Additionally, the wording “face masks” is broad enough to encompass swimming face masks classified in International Class 9, face masks for use by medical providers classified in International Class 10, knit face masks classified in International class 25, and toy face masks classified in International Class 28.  Thus, applicant must amend the identification to further clarify the type of goods and their purpose.

 

The wording “lip scrubs” is indefinite and must be clarified because it fails to indicate the category for the goods and their purpose with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to clarify the type of goods and the part of the body for which the goods are intended.

 

The wording “facial wipes” must be clarified because it is indefinite and/or too broad and could include goods in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because the nature of the goods remains unclear.  Additionally, this wording is broad enough to encompass cosmetic wipes classified in International Class 3 and medicated wipes classified in International Class 5.  Thus, applicant must amend the identification to further clarify the nature of the goods and their purpose and whether they are medicated.

 

The wording “hand moisturizing treatments; foot moisturizing treatments; acne spot treatments” must be clarified because it is indefinite and too broad and could include goods and/or services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because the nature of the goods and/or services remains unclear.  Additionally, the wording “hand moisturizing treatments; foot moisturizing treatments” is broad enough to encompass non-medicated skin care preparations classified in International Class 3 and cosmetic skin treatment services classified in International Class 44.  Additionally, the wording “acne spot treatments” is broad enough to encompass acne treatment preparations classified in International Class 5 and facial treatment services classified in International Class 44.  Thus, applicant must amend the identification to clarify the nature of the goods and/or services and their purposes.  If applicant intends to offer goods, applicant must specify the goods as “non-medicated” and “preparations”.  If applicant intends to offer services, applicant must incorporate the wording “services” into the identification.

 

Finally, the wording “cleansing oils” is indefinite and must be clarified because the type or category for the goods and their purpose remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to clarify the type of goods and their purpose.

 

Third, applicant has classified all of the goods and services in International Class:  “35.”  However, the proper classification for each item is as follows: 

 

International Class 3: private label cosmetics; anti-aging skin care products; anti-pollution skin care products; anti-oxidant skin care products; natural skin care products; skin cleaners; skin scrubs; skin masks; multi step skin care (if applicant intends to offer goods); hair conditioning treatments, moisturizers; lip masks; lip scrub; face mask, facial wipes; hand moisturizing treatments; foot moisturizing treatments; body lotions; cleansing oils;

 

International Class 5: multi step skincare; hair conditioning treatments, moisturizers; facial wipes; acne spot treatments (if all of the aforementioned identified goods are medicated);

 

International Class 9: face masks (if applicant’s goods are protective/athletic and not for medical purposes);

 

International Class 10: face masks (if applicant’s goods are for use by medical personnel for medical use)

 

International Class 25: face masks (if applicant’s goods are in the nature of clothing)

 

International Class 28: face masks (if applicant’s goods are in the nature of toys);

 

International Class 40: contract manufacturing in the field of skin and body care; private label manufacturing in the field of skin and body care;

 

International Class 44: multi-step skincare services; hand moisturizing treatments; foot moisturizing treatments; acne spot treatments (if applicant intends to offer all of the aforementioned as services).

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international classes for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

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

 

International Class 3: Private label cosmetics; anti-aging skin care products, namely, [indicate each specific product, e.g., non-medicated skin serum]; anti-pollution skin care products, namely, [indicate each specific product, e.g., skin cleansing lotions, skin softeners, etc.]; anti-oxidant skin care products, namely, [indicate each specific product, e.g., skin cleansers, skin creams, etc.]; natural skin care products, namely, [indicate each specific product, e.g., skin texturizers, skin emollients, etc.]; skin cleansers; skin care preparations, namely, skin scrubs; skin masks; multi-step skin care preparations, namely, [indicate specific goods, e.g., body polish]; 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 5: Multi-step medicated skin care preparations; medicated [indicate type of goods, e.g., balms, serums, etc.] for treatment of hair; medicated moisturizers; pre-moistened medicated facial wipes; acne spot treatment preparations;

 

International Class 9: Swimming face masks;

 

International Class 10: Face masks for use by health care providers;

 

International Class 25: Knit face masks;

 

International Class 28: Toy face masks;

 

International Class 40: Contract manufacturing in the field of skin and body care [indicate specific category of goods, e.g., cosmetics]; private label manufacturing services for others in the field of skin and body care [indicate specific category of goods, e.g., cosmetics];

 

International Class 44: Multi-step cosmetic skin care services; cosmetic skin treatment services, namely, hand moisturizing treatments, foot moisturizing treatments, and acne spot treatments.

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 8 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

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.  

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the requirement in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/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 8/7/2018 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 8/7/2018 (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.