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: 2/12/2019

 

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.

 

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).

IDENTIFICATION OF GOODS AND SERVICES

 

The wording in the identification of goods and services must be clarified because it is too broad and could include goods and services in other international classes.  See TMEP §§1402.01, 1402.03.

In particular, in Class 3, the applicant must clarify the nature of its moisturisers; beauty care preparations, body care preparations, products for removing make-up; conditioners for the face, hands and body; abrasives; almond oil; alum stones; amber; aromatics; balms other than for medical purposes; colorants for toilet purposes; cosmetic kits; dyes (cosmetic-); emery; extracts of flowers; flower perfumes (bases for-); ionone; jasmine oil; javelle water; mint essence; musk; neutralizers for permanent waving; oils for toilet purposes; pumice stone; rose oil; terpenes; and toiletries.

Applicant should also delete the duplicate references to beauty masks, ethereal essences, false eyelashes, extracts of flowers, petroleum jelly for cosmetic purposes, cosmetic kits, false nails, neutralizers for permanent waving, cosmetic preparations for slimming purposes, and tissues impregnated with cosmetic lotions.

In Class 35, applicant must clarify the purposes of its trade fairs and the nature of its mail order, retail, on-line retail store, and mail order catalogue services.

In addition, the identification of goods and 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 information into the description of the goods and services.

The following wording is suggested, if accurate:

“Cosmetics, make up; lipsticks; lip gloss; make-up powder and foundation; skin moisturisers; beauty care preparations, namely, [applicant must specify, e.g., beauty creams for body care, body and beauty care cosmetics, etc.], body care preparations, namely, [applicant must specify, e.g., beauty creams for body care, body and beauty care cosmetics, etc.], essential oils for personal use; preparations for removing make-up; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; abrasives, namely, [applicant must specify, e.g., flexible abrasives, abrasive paste, etc.]; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; aloe vera preparations for cosmetic purposes; alum stones being astringent for cosmetic purposes; amber being perfume; antiperspirants; aromatics, namely, [applicant must specify, e.g., aromatic oils]; astringents for cosmetic purposes; balms other than for medical purposes, namely, [applicant must specify, e.g., lip balm, shaving balm, etc.]; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; essential oils of cedarwood; essential oils of citron; cleansing milk for toilet purposes; colorants for toilet purposes, namely, [applicant must specify, e.g., hair colorants]; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprising [applicant must specify, e.g., lipstick, mascara, etc.]; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; cosmetic dyes, namely, [applicant must specify, e.g., hair dyes]; eau de cologne; emery cloth and paper; essential oils; ethereal essences; ethereal oils; extracts of flowers being perfumes; eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; adhesives for affixing false hair; false nails; bases for flower perfumes, namely, [applicant must specify, e.g., perfume oils]; dental bleaching gels; greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; jasmine oil for personal use; javelle water, namely, [applicant must specify, e.g., bleaching preparations for cosmetic purposes]; petroleum jelly for cosmetic purposes; joss sticks; lavender oil; lavender water; essential oils of lemon; lotions for cosmetic purposes; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; mint for perfumery; musk being perfumery; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; neutralizers for permanent waving, namely, [applicant must specify, e.g., permanent wave preparations]; oils for cosmetic purposes; oils for perfumes and scents; cosmetic oils for toilet purposes; cosmetic pencils; eyebrow pencils; perfumery; perfumes; denture polishes; pomades for cosmetic purposes; make-up powder; pumice stone for personal use; rose oil for cosmetic use; shampoos; shaving preparations; cosmetic preparations for skin care; skin whitening creams; breath freshening sprays; breath freshening strips; sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes being essential oils; tissues impregnated with cosmetic lotions; toilet water; non-medicated toiletry preparations; decorative transfers for cosmetic purposes; nail varnish; varnish-removing preparations; waving preparations for the hair; depilatory wax; eyeshadow; concealer” in International Class 3

“Dental abrasives; almond oil for the treatment of [applicant must specify condition or disease to be treated]” in International Class 5

“Emery boards” in International Class 8

“Products for removing make-up, namely, make-up removing appliances” in International Class 21

“Products for removing make-up, namely, make-up removing cloths” in International Class 24

“Advertising and promotion of cosmetics; conducting, arranging and organising trade fairs for commercial and advertising purposes related to cosmetics; mail order services featuring cosmetics; provision of business consultation, information and advisory services relating to cosmetics; retail store services featuring cosmetics; on-line retail store services featuring cosmetics; arranging of cosmetics trade fairs for commercial and advertising purposes; mail order catalogue services featuring cosmetics; retail store services featuring bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic kits, cosmetics, eau de cologne, eyebrow cosmetics, eyebrow pencils, false eyelashes, false nails, lip glosses, lipsticks, make-up, make-up powder, make-up preparations, make-up removing preparations, mascara, nail polish, nail varnish, perfumery, perfumes, hand-operated hand tools and implements, cutlery, side arms, razors, curling tongs, depilation appliances, electric and non-electric fingernail polishers, electric or nonelectric, flat irons, hair clippers for personal use matches, electric and non-electric hand implements for hair curling, hair-removing tweezers, manicure sets, manicure sets, electric, nail buffers, electric or non-electric, nail clippers, electric or non-electric, nail files, nail files, electric, pedicure sets, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking and supervision, life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, sunglasses, spectacles, precious metals and their alloys, jewelry, precious stones, horological and chronometric instruments, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites except furniture, instructional and teaching material except apparatus, plastic materials for packaging, printers' type, printing blocks, blotters, booklets, books, calendars, cards, document holders, drawing pads, drawing pens, drawing sets, envelopes, flyers, folders, greeting cards, magazines, newspapers, pamphlets, pencils, pens, periodicals, postcards, posters, printed matter, printed publications, scrapbooks, stationery, teaching materials except apparatus, leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, backpacks, beach bags, boxes of leather or leather board, briefcases, canes, cases of leather or leatherboard, collars for animals, garment bags for travel, handbags, hat boxes of leather, haversacks, imitation leather, key cases, leather leads, leather leashes, moleskin, pocket wallets, purses, rucksacks, school bags, school satchels, shopping bags, travelling bags, travelling trunks, valises, vanity cases, not fitted, wheeled shopping bags, furniture, mirrors, picture frames, wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of pearl, meerschaum, household or kitchen utensils and containers, combs and sponges, brushes except paint brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass except glass used in building, glassware, porcelain and earthenware, mirrors, abrasive sponges for scrubbing the skin, aerosol dispensers, not for medical purposes, brushes, comb cases, combs, cosmetic utensils, deodorising apparatus for personal use, eyebrow brushes, hair for brushes, make-up removing appliances, nail brushes, perfume burners, perfume sprayers, perfume vaporizers, powder compacts, powder puffs, shaving brush stands, shaving brushes, soap boxes, soap dispensers, soap holders, soup bowls, sponge holders, stands for shaving brushes, toothbrushes, toothbrushes, electric, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing materials except of rubber or plastics, raw fibrous textile materials, yarns and threads, for textile use, textiles and bedclothes, blankets, bedspreads, sheets, pillowcases, curtains of textile, towels, flannels, throws, tablecloths, bed covers, table covers, clothing, footwear, headgear, aprons, babies' pants, bandanas, bath robes, bath slippers, bathing drawers, bathing suits, bathing trunks, belts, berets, bodices, boots, brassieres, breeches for wear, camisoles, caps, coats, dresses, dressing gowns, ear muffs, footmuffs, not electrically heated, galoshes, garters, gloves, hats, headbands, hosiery, inner soles, jackets, jerseys, jumper dresses, jumpers, knitwear, leg warmers, leggings, leggings, masquerade costumes, mittens, money belts, muffs, neckties, outerclothing, overalls, overcoats, pants, parkas, petticoats, pinafore dresses, ponchos, pullovers, pyjamas, sandals, saris, sarongs, scarfs, shawls, shirts, shoes, short-sleeve shirts, shoulder wraps, shower caps, singlets, skirts, sleep masks, slippers, smocks, socks, sports jerseys, sports shoes, stockings, stuff jackets, suits, sun visors, suspenders, sweaters, swimsuits, tee-shirts, tights, top hats, trousers, turbans, underclothing, underpants, underwear, uniforms, veils, vests, waistcoats, waterproof clothing, wooden shoes, wristbands, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, non-textile wall hangings, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces being condiments, spices, ice, grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, soft drinks, energy drinks, wines, iced-tea, aperitifs, carbonated beverages, fruit extracts, ginger ale, grape must, must, fruit drinks made from concentrate, cordials, malt water, seltzer water, soda water, tonic water, vegetable juices, essences used in the preparation of liqueurs, barley waters, fruit squashes, sarsaparilla, alcoholic beverages except beers, tobacco, smokers' articles, matches” in International Class 35

Make up artist services; make-up application services; cosmetic make-up application services; beauty care services; beauty salon and beauty treatment services; beauty therapy services and treatments; beauty treatment; healthcare, diet, exercise and healthy lifestyle advisory services; cosmetic treatment for the hair; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services, in International Class 44,

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

MULTIPLE-CLASS APPLICATIONS REQUIREMENTS

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

OPTION TO DELETE SECTION 1(b) BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

 

 

 

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.  

 

 

 

/Andrew Benzmiller/

Staff Attorney

Law Office 100

(571) 272-9127

andrew.benzmiller@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 2/12/2019 FOR U.S. APPLICATION SERIAL NO. 88183890

 

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 2/12/2019 (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.