To: | LRC Products Limited (mlerner@ssbb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88027752 - PEDIMASK - 104888-0640 |
Sent: | 11/1/2018 3:13:30 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88027752
MARK: PEDIMASK
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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: LRC Products Limited
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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. 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.
IDENTIFICATION OF GOODS
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
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.
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.