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: 11/1/2018

 

 

 

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 October 31, 2018, the trademark examining attorney and Mark Lerner 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.

 

SUMMARY OF ISSUES:

• Identification of Goods
• Disclaimer Required

 

IDENTIFICATION OF GOODS

 

The wording “Creams, gels, lotions, oils, balsams, powders, talcum powders and sprays for use on the feet and skin” in the identification of goods is indefinite and must be clarified because applicant must clarify the nature of the goods as non-medicated foot and skin products, as well as clarify the sprays as deodorant sprays.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “non-medicated preparations for the treatment, care, cleansing, soothing, revitalizing and relaxing of the feet and skin;” in the identification of goods is indefinite and must be clarified because applicant must clarify the goods as being in the nature of non-medicated skin body care preparations.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “non-medicated preparations for the bath in the form of salts, oils and soaks;” in the identification of goods is indefinite and must be clarified because applicant must more clearly indicate the goods as being in the nature of bath preparations.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “foot masks” in the identification of goods is indefinite and must be clarified because applicant must clarify the goods as being for skin care.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “deodorants for the feet and skin” in the identification of goods is indefinite and must be clarified because applicant must more clearly identify the deodorants as being for personal use.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “deodorising creams, gels, lotions, powders, talcum powders and sprays for the feet and skin” in the identification of goods is indefinite and must be clarified because applicant must clarify the goods as being non-medicated body and foot deodorizing goods, as well as further clarify the nature of the gels (e.g., shower, shaving, etc.), powders (e.g., perfumed, body, etc.). Applicant must also clarify the sprays as being deodorant sprays for personal use.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font): 

 

Class 3:           Non-medicated foot and skin creams, lotions, body oils, powders, talcum powders, and deodorant sprays for use on the feet and skin; non-medicated skin and body care preparations for the treatment, care, cleansing, soothing, revitalizing and relaxing of the feet and skin; non-medicated bath preparations in the form of salts, oils, and soaks; soaks in the form of tablets, namely, non-medicated foot soaks; foot masks for skin care; cloths impregnated with skin creams, skin gels, skin lotions; personal deodorants for the feet and skin; non-medicated deodorizing body and foot creams, {specify, e.g., bath, shower, shaving} gels, lotions, {specify, e.g., perfumed, body} powders, talcum powders, and deodorant sprays for personal use for the feet and skin

 

Class 25:         Hosiery; tights; stockings; socks

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PEDIMASK” because it is not inherently distinctive.  These unregistrable term is at best merely descriptive of a characteristic or feature of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached internet evidence from Dermstore, Pro Nail Essentials, and PureSpa Direct shows this wording is commonly used in connection with similar goods to identify food masks, which applicant has identified among its goods. Thus, the wording merely describes applicant’s goods as foot masks, or “pedimasks”.

 

In addition, the attached internet evidence from EDC Skincare, Revolve, and Get The Gloss shows pedimasks or foot masks work in conjunction with socks or similar footwear products in order to assist in exfoliating the foot. Thus, the wording “PEDIMASK” merely describes applicant’s Class 25 goods as being socks and similar products used in connection with foot masks to aid in foot exfoliation.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PEDIMASK” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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.  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.  

 

 

 

Justin Miller

/Justin Miller/

Trademark Examining Attorney

Law Office 125

(571) 272-6040

justin.miller@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 11/1/2018 FOR U.S. APPLICATION SERIAL NO. 88027752

 

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 11/1/2018 (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.