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: 12/22/2018

 

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.

 

 

SUMMARY OF ISSUES:

• Trademark Act, Section 2(d) refusal
• Identification of goods and services
• Multiple classes
• Information on prior pending applications

 

 

 

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The stated refusal refers to International Classes 3, 24 and 35 only and does not bar registration in the other classes.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3054168, 4748933 and 5242493.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant seeks registration of the mark TROPIC for a wide variety of beauty and cosmetic preparations, for various blankets, fabrics and towels, and for retail store services featuring these goods and featuring various clothing, footwear and headwear.

 

The cited registered marks are as follows:

 

TROPIX for “beach towels”

TROPIC for “fabrics for textile use” and various clothing, footwear and headwear

TROPICZ for “Indoor tanning products, namely, non-medicated skin tan darkening lotions and skin moisturizers”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

In the case at hand, the two key factors are the similarity of the marks and the relatedness of the goods and/or services, both of which are discussed below.

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The applied-for mark legally identical to the registered mark TROPIC and is nearly identical to the registered marks TROPIX and TROPICZ, which are simply the misspelling of the plural form of the applied-for mark.

 

An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

COMPARISON OF THE GOODS/SERVICES

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

When broad wording is used to describe the goods and/or services, the wording presumably encompasses all goods and/or services of the type described.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, if the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

The applicant’s broad wording “towels” is presumed to include beach towels.  The wording “fabrics for textile use” in Reg. No. 4748933 is presumed to encompass furnishings and upholstery fabrics.  Applicant’s numerous skin moisturizers and tanning preparations are presumed to encompass non-medicated skin tan darkening lotions and skin moisturizers.  Applicant’s retail services are presumed to feature all the registrants’ type of goods.

 

 

The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Furthermore, the other Class 3 products in the application are highly related to tanning lotions and skin moisturizers and the other Class 24 products are highly related to beach towels.  In support, of the relatedness of the goods and/or services, attached is Internet evidence showing that the same entity provides beach towels, other towels, bed linens such as blankets, the same entity provides tanning lotions, skin moisturizers, fragrances, make-up and many other cosmetic beauty products, and that the same entity provides retail services featuring clothing and clothing items.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). The evidence was found using the GOOGLE® search engine at the following:

 

http://www.wamsutta.com/

http://www.bedbathandbeyond.com/store/product/wamsutta-reg-heavyweight-resort-stripe-beach-towel/3284804

http://www.bedbathandbeyond.com/1/3/wamsutta-blankets

(Wamsutta® online retail store and brand of beach towels, other towels and bed linens and blankets)

 

http://www.macys.com/shop/bed-bath/beach-towels/Brand/Hotel%20Collection?id=51717

http://www.macys.com/shop/bed-bath/blankets-throws/Brand/Hotel%20Collection?id=29405

(Hotel Collection® brand of beach towels and blankets)

 

http://www.lancome-usa.com/skin-care/sun-care-and-body/self-tanners/flash-bronzer/1000418.html

(Lancome® online retail store and brand of tanning lotions and wide variety of other cosmetic/beauty products)

 

http://www.clarinsusa.com/en/sun-self-tanning/430/

(Clarins® online retail store and brand of tanning lotions and wide variety of other cosmetic/beauty products)

 

http://www.jcrew.com/

(J. Crew® online retail store and retail stores and brand clothing)

 

http://www.talbots.com/online/

(Talbot ® online retail store and retail stores and brand clothing)

 

 

The trademark examining attorney has also attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Please note that similarity as to each and every product and/or service listed in the description of goods and/or services within a class need not be found. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods and/or services in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Based on the foregoing, registration is refused under Trademark Act, Section 2(d).

 

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.

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording highlighted and discussed below in the identification of goods and services must be clarified because it is indefinite and/or too broad and could include goods and/or services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

In addition to the specifics below, applicant must comply with the following:

 

 

 

1)     Applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

2)     The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

3)     Applicant is advised to delete or modify any duplicate entries in the identification of goods and/or services.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

4)     Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or 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).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.  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. 

 

 

Applicant may adopt the following wording, if accurate (instructions and specifics in bold italicized text and suggestions in bold text):

 

Class 3: Cosmetics; Exfoliating scrubs for the feet; Eye liner; Eye makeup remover; Eye pencils; Eye shadow; Eye sticks in the nature of {further describe, e.g. cosmetic eye color sticks}; Eyebrow gel; Eyebrow mascara; Eyebrow pencils; Adhesives for affixing false eyelashes; Facial scrubs; False nails; Foundation makeup; Hair care masks; Hair conditioner; Hair cosmetics; Hand {specify purpose of gel, e.g. cosmetic} gels; Hand{specify purpose of milks, e.g. moisturizing} milks; Lip balm; {state the goods are non-medicated} Non-medicated lip care preparations; {specify that goods are cosmetic} Cosmetic lip conditioners; Lip gloss; Lip liners; {clarify nature of goods; see following example} Cosmetics in the nature of Lip pencils; Lipstick cases; Lipsticks; Liquid foundation; Lotions for beards; Lotions for cellulite reduction; Makeup primer; Mascaras; {clarify nature of the goods; see following example} Cosmetic Milks; {indicate area of use, e.g. skin} Moisturisers; Nail buffing preparations; Nail care preparations; Nail cream; Nail gel; Nail strengtheners; Natural oils for perfumes; Night creams ; Non-medicated foot soaks; Non-medicated soaps; Perfumed oils for skin care; Room fragrances; Shaving cream; Shaving sets, comprised of shaving cream and aftershave; Shower and bath gel; After-sun creams; After-sun lotions; After-sun oils;Air fragrance preparations; Aloe vera preparations for cosmetic purposes; Anti-aging creams; Anti-aging moisturizers; Antiperspirants for personal use; Anti-wrinkle cream; Aromatic essential oils; Volcanic Ash for cleaning; Balms, other than for medical purposes, namely, for {specify area of use, e.g. skin care}; Bath cream; Bath oil; Beauty care cosmetics; Beauty care preparations, namely, {specify type of preparations, e.g. skin care preparations}; Beauty lotions; Beauty masks; Body butter; Body cleansing foams; Body cream; Body glitters; Body lotion; Body Oil to Milks in the nature of {clarify nature of goods, e.g. body oil than transforms into milk form}; Body milk; Body scrub; Body wash; Bubble bath; {specify area of use, e.g. face} Cleansing masks; Concealers for {indicate type, e.g. face}; Cosmetic Conditioning creams for {specify area of use, e.g. hair}; Cosmetic creams for the skin; Cosmetic moisturisers; Cosmetic nourishing creams; Cosmetic preparations for eyelashes; Cosmetic preparations for skin firming; Cosmetic products preparations for the shower {“products” could include goods such as “cosmetic brushes” in Class 21}; Cosmetics for personal use; Cosmetics for suntanning; Creams for cellulite reduction; Exfoliating scrubs for cosmetic purposes; Exfoliating scrubs for the face; Exfoliating scrubs for the feet {duplicate}; Exfoliating scrubs for the hands; Eye cream; Eye gels; Face creams; Face and body glitter; Face creams for cosmetic use; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic preparations for skin care; Cosmetics for protecting the skin from sunburn; Cosmetics for the treatment of dry skin; Creams for tanning the skin; Skin cleansers; Skin foundation; Skin moisturizers; Skin toners; Skincare cosmetics; Body cream{duplicate}; Body cream for cosmetic use; Body scrub{duplicate}; Serums for cosmetic purposes; Makeup foundations; Eye makeup; Facial makeup; Nail cosmetics; Perfume; Aftershave; Shaving balm; Shave creams; Shampoo; Baby bath mousse; Baby lotion; Baby oil; Baby shampoo; Baby powder; Non-medicate Baby care products, namely, {specify Class 3 types of goods; “products” could include goods such as “Non-woven textile wipes for cleaning baby bottles and baby feeding equipment” in Class 21; see following example for suggestion} baby skin care preparations

Class 24: Blanket throws, bathroom towels, bath linen, cot blankets, cloths for removing makeup, furnishing and upholstery fabrics, towels, wall hangings of textile {non-textile wall hangings are in Class 27}, blankets, namely, {specify type of blanket, e.g. bed blankets; wording is broad enough to encompass “horse blankets” in Class 18 and “yoga blankets” in Class 28)

Class 35: {further describe nature of services; see following example} Commercial information and advice services for consumers in the choice of products and services; sales promotion services, dissemination of advertising matter; demonstration of goods; distribution of samples; organisation of promotional events for commercial or advertising purposes; organization of fairs and exhibitions for economic and advertising purposes; advertising, advertising consulting, publicity services; marketing services {must add “services” because “marketing” alone could encompass promotional services and could also reasonably refer to a retail-type activity}, marketing consulting; commercial and business consulting, {specify type or organisation consulting and sale consulting services; see following} business organisation consulting and consulting in the field of sales methods, sales management, and sales improvement; selling assistance, namely, consultation in respect of sales techniques and programs; providing commercial information regarding products from searchable indexes and databases of information; {for the retail  and online retail services, must specify the nature of the retail activity provided because the current wording could include a wide array of retail support services – from accounting to advertising and marketing services} retail store services, including those effected in a domestic setting, and online retail store services relating to beauty products, cosmetics, skincare products and cosmetics, Exfoliating scrubs for the feet, Eye liner, Eye makeup remover, Eye pencils, Eye shadow, Eye sticks, Eyebrow gel, Eyebrow mascara, Eyebrow pencils, Adhesives for affixing false eyelashes, Facial scrubs, False nails, Foundation makeup, Hair care masks, Hair conditioner, Hair cosmetics, Hand gels, Hand milks, Lip balm, Lip care preparations, Lip conditioners, Lip gloss, Lip liners, Lip pencils, Lipstick cases, Lipsticks, Liquid foundation, Lotions for beards, Lotions for cellulite reduction, Makeup primer, Mascaras, Milks, Moisturisers, Nail buffing preparations, Nail care preparations, Nail cream, Nail gel, Nail strengtheners, Natural oils for perfumes, Night creams, Non-medicated foot soaks, Non-medicated soaps, Perfumed oils for skin care, Room fragrances, Shaving cream, Shaving sets, comprised of shaving cream and aftershave, Shower and bath gel, After-sun creams, After-sun lotions, After-sun oils, Air fragrance preparations, Aloe vera preparations for cosmetic purposes, Anti-aging creams, Anti-aging moisturizers, Antiperspirants for personal use, Anti-wrinkle cream, Aromatic essential oils, volcanic ash for cleaning, Balms, other than for medical purposes, Bath cream, Bath oil, Beauty care cosmetics, Beauty care preparations, Beauty lotions, Beauty masks, Body butter, Body cleansing foams, Body cream, Body glitters, Body lotion, Body Oil to Milks, Body milk, Body scrub, Body wash, Bubble bath, Cleansing masks, Concealers, Conditioning creams, Cosmetic creams for the skin, Cosmetic moisturisers, Cosmetic nourishing creams, Cosmetic preparations for eyelashes, Cosmetic preparations for skin firming, Cosmetic products for the shower, Cosmetics for personal use, Cosmetics for suntanning, Creams for cellulite reduction, Exfoliating scrubs for cosmetic purposes, Exfoliating scrubs for the face, Exfoliating scrubs for the feet, Exfoliating scrubs for the hands, Eye cream, Eye gels, Face creams, Face and body glitter, Face creams for cosmetic use, Cosmetic preparations for protecting the skin from the sun's rays, Cosmetic preparations for skin care, Cosmetics for protecting the skin from sunburn, Cosmetics for the treatment of dry skin, Creams for tanning the skin, Skin cleansers, Skin foundation, Skin moisturizers, Skin toners, Skincare cosmetics, Body cream, Body cream for cosmetic use, Body scrub, Serums for cosmetic purposes, Makeup foundations, Eye makeup, Facial makeup, Nail cosmetics, Perfume, Aftershave, Shaving balm, Shave creams, Shampoo, Baby bath mousse, Baby lotion, Baby oil, Baby shampoo, Baby powder, non-medicated Baby care products, Candles, Cushions, blankets, photo­frames, vases, lamps, lampshades, decorative jars, mirrors, deck chairs, Blanket throws, bathroom towels, bath linen, cot blankets, cloths for removing makeup, furnishing and upholstery fabrics, towels, wall hangings, Clothing, footwear, headgear, scarves, T-shirts, jumpers, beach robes, beach footwear; information, advisory and consultancy services relating to the aforementioned services

Class 41: Training in the field of product presentation; provision of training services, in particular for sales personnel relating to the distribution/sale of goods and products through direct selling channels; training in the field of product presentation {duplicate}; information, advisory and consultancy services relating to the aforementioned services

Class 44: Hygienic and beauty care services; cosmetic treatment services for the body, face and hair; beauty counselling; {further clarify nature of services; see following} Beauty cosmetics consultancy services in the selection and use of cosmetics; beauty consultancy services; beauty therapy services, namely, {further describe nature of therapy, e.g. beauty salons}; information, advisory and consultancy services relating to the aforementioned services

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

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 CLASSES

 

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 Sections 1(b) and 44:

 

(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).  The application identifies goods and/or services that are classified in more than 5 classes; however, applicant submitted a fee(s) sufficient for only 5 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).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88004998, 87564235 and 87780135 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

 

CLOSING

 

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.  

 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 12/22/2018 FOR U.S. APPLICATION SERIAL NO. 88112528

 

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 12/22/2018 (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.