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: 11/7/2018

 

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

 

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).

 

SUMMARY OF ISSUES:

• Refusal – Specimen (International Class 35)
• Requirement – Amend Identification of Goods
• Multiple Class Application
• Requirement – Disclaimer of Descriptive Wording

REFUSAL – SPECIMEN (INTERNATIONAL CLASS 35)

THIS PARTIAL REFUSAL APPLIES TO CLASS 35 ONLY

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 35.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  Specifically, the specimen is pages from applicant’s website “about us” page that provides information about applicant and the history of its products; however, the specimen fails to show applied-for mark in connection with the identified services in the application in either advertising or rendering of the services. The specimen does not provide a sufficient reference to the services to show the applied-for mark as source-indicating for the services; for example, the specimen merely provides information about applicant and does not indicate or show how applicant’s goods are sold as indicated by the services in the application (online retail store services).

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

The wording “aromatic body care products, namely, body lotion, non-medicated lip balm, soap, body polish, body and facial exfoliating scrubs” in the identification of goods is indefinite and must be clarified because the wording “soap” is not completely specified, i.e., type of soap.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “aromatic body care products, namely, body lotion, non-medicated lip balm, non-medicated {indicate type of soap, .e.g., beauty, etc.} soap, body polish, body and facial exfoliating scrubs.”

 

The wording “sunscreen” in the identification of goods is indefinite and must be clarified because it does not indicate the type of sunscreen.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “sunscreen, namely, {indicate type, e.g., sunscreen cream, waterproof sunscreen, sunscreen preparations, etc.}.”

 

The wording “facial wipes” in the identification of goods is indefinite and must be clarified because it does not indicate the type of wipes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “pre-moistened facial wipes.”

 

Applicant has classified “skin care tools, namely, sonic microdermabrasion device for acne treatment and pore extraction and sonic dermaplaning device for hair removal and skin exfoliation” in International Class 21; however, the proper classification is International Class 10.  Therefore, applicant may respond by (1) adding International Class 10 to the application and reclassifying these goods in the proper international class, (2) deleting “skin care tools, namely, sonic microdermabrasion device for acne treatment and pore extraction and sonic dermaplaning device for hair removal and skin exfoliation” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  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 requirements specified in this Office action. Additionally, the wording is indefinite because it does not indicate the nature of the goods.

 

The wording “exfoliation device” in the identification of goods is indefinite and must be clarified because the wording does not indicate the type of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “exfoliation device, namely, {indicate type of goods in Class 21, e.g., power-operated brush used to clean and exfoliate the skin}.”

 

Applicant may substitute the following wording, if accurate: 

Class 3: Non-medicated anti-aging creams, non-medicated anti-aging moisturizers, non-medicated anti-aging serums; aromatic body care products, namely, body lotion, non-medicated lip balm, non-medicated {indicate type of soap, .e.g., beauty, etc.} soap, body polish, body and facial exfoliating scrubs; non-medicated foot cream; beauty creams for body care; beauty gels; beauty lotions; beauty masks; beauty serums; body lotions; body oils; body wash; cleansing creams; cosmetic creams for skin care; cosmetic masks; cosmetic nourishing creams; cosmetic oils; cosmetic preparations for body care; cosmetic preparations for skin care; cosmetic preparations for skin renewal; cosmetic preparations, namely, firming creams; cosmetic preparations, namely, firming lotions; essential oils for personal use; face and body creams; face and body lotions; face creams for cosmetic use; facial beauty masks; foam cleansers for personal use; fragranced body care preparations, namely, washes and lotions; fragranced face care preparations, namely, washes, toners, moisturizers and masks; lotions for face and body care; moisturizing preparations for the skin; non-medicated cleansers for personal use, namely, face and body washes and scrubs; non-medicated facial and eye serum containing antioxidants; non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; non-medicated lip cream; non-medicated stimulating lotions for the skin; skin care products, namely, non-medicated skin serum; skin clarifiers; skin cleansing lotion; skin creams; skin masks; skin moisturizer masks; skin toners; eye shadow, namely, cream eye pencils; sunscreen, namely, {indicate type, e.g., sunscreen cream, waterproof sunscreen, sunscreen preparations, etc.}; cleaner for makeup brushes; pre-moistened facial wipes, all the foregoing goods being organic

 

Class 10: skin care tools in the nature of microdermabrasion apparatus, namely, sonic microdermabrasion device for acne treatment and pore extraction and sonic dermaplaning device for hair removal and skin exfoliation

 

Class 21: Power operated brushes using sonic technology to clean and exfoliate skin; antimicrobial sonic oscillating electric applicator for applying makeup; exfoliation device, namely, {indicate type of goods in Class 21, e.g., power-operated brush used to clean and exfoliate the skin; replacement brushes for antimicrobial sonic oscillating electric applicator; replacement brushes for power-operated brushes; extension handle for power operated brushes; replacement blade assemblies for dermaplaning devices; carrying cases and stands featuring power supply connectors and battery charging devices specially adapted for use with power operated brushes to clean and exfoliate the skin

 

Class 35: On-line retail store services featuring organic face and body skincare products and devices

 

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.

MULTIPLE CLASS APPLICATION

The amendment to allege use references goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class for which use in commerce is being asserted:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit both an application filing fee and a TEAS $100 amendment to allege use fee per class for any international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule.  Specifically, the amendment to allege use identifies goods and/or services that are classified in at least four (4) classes; however, applicant submitted fees sufficient for only three (3) classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the amendment to allege use to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 3 and 21; and applicant needs a specimen for classes 10 and 35.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application prior to filing the amendment to allege use.”  See more information about verification.

 

See 15 U.S.C. §§1051(c), 1112; 37 C.F.R. §§2.6(a)(2)(ii), 2.76(b), 2.86(e); TMEP §§1104.10(b)(v), (b)(vii), 1403.01, 1403.02(c).

 

See an overview of the requirements for a multiple-class amendment to allege use and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

REQUIREMENT – DISCLAIMER OF DESCRIPTIVE WORDING

Applicant must provide a disclaimer of the unregistrable part(s) 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 “BEAUTY” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  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 evidence from collinsdictionary.com shows this wording describes “people, products, and activities that are concerned with making women look beautiful.”  Thus, the wording merely describes applicant’s goods and/or services because applicant’s goods and/or services are intended to make users and/or aspects of their bodies “beautiful”.

 

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

 

No claim is made to the exclusive right to use “BEAUTY” 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. 

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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 11/7/2018 FOR U.S. APPLICATION SERIAL NO. 88040674

 

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 11/7/2018 (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.