Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  October 07, 2019

 

INTRODUCTION

 

This Office Action is supplemental to and supersedes the previous Office Action issued on 9/06/2019 in connection with this application. Based on information and/or documentation in applicant’s response, the Trademark Examining Attorney now issues the following new requirement:

(1)   Identification Amendment Requirement

See TMEP §§ 706, 711.02.

 

The Examining Attorney reviewed applicant’s response and determined the following:

(1)    Applicant’s substitute specimen is acceptable, thus, the Section 1 and 45 Refusal has been OBVIATED;

(2)    Applicant appropriately responded to the Request for Information About Specimen Requirement, thus, this requirement is SATISFIED;

(3)    Applicant’s documentation supporting applicant’s domicile is acceptable, thus, the Domicile Clarification Requirement is SATISFIED; and

(4)    Applicant’s documentation supporting applicant’s domicile is acceptable, thus, the US Counsel Requirement has been WITHDRAWN.

See TMEP § 713.02.

 

SUMMARY OF ISSUES

·       NEW ISSUE: Identification Amendment Requirement

Applicant must respond to all issues in this Office Action within six (6) months of the date of issuance of this Office Action. 37 C.F.R. § 2.65(a).

 

IDENTIFICATION AMENDMENT REQUIREMENT

The wording “soap, beauty creams” in the identification of goods is indefinite and must be clarified because applicant has not indicated the nature of the “soap,” which can encompass “bar soap” and “shaving soap.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant should note that the amended entry cannot include any type of soap in class 3, rather, it must be a type of “skin soap,” “beauty soap” or “perfumed soap” because applicant’s goods cannot be expanded beyond those originally itemized in the application.

 

Moreover, if applicant elects to clarify or limit this word, applicant should also separate the entry itemizing soap from the “beauty creams” because these goods are distinct. Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. 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. 

 

Final Suggested Identification

If accurate, applicant may adopt the suggestion below, which reflects the necessary changes discussed above and shows added or amended language underlined for clarity:

 

Class 3: “Skin soap, namely, {indicate type, e.g., bar soap, shaving soap}; Beauty creams; Beauty lotions; Beauty milks; Cosmetic creams; Cosmetic mud masks; Cosmetic oils; Cosmetic pads; Cosmetic pencils; Cosmetic skin fresheners; Cosmetic sun oils; Lotions for beards; Perfume oils; Perfumed creams; Perfumed paste; Perfumed soap; Perfumes; Perfumes, aftershaves and colognes; Baby lotion; Bath lotion; Beauty soap; Body lotion; Body lotions; Body and beauty care cosmetics; Facial lotion; Hair lotion; Skin lotion; Skin lotions; Skin soap”

 

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.

 

RESPONSE

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 requirement 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.  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.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

/Haneen Daham/

Haneen A. Daham, Esq.

Trademark Examining Attorney

Law Office 127

United States Patent and Trademark Office

E: haneen.daham@uspto.gov

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 07, 2019 for

U.S. Trademark Application Serial No. 88246290

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Haneen Daham/

Haneen A. Daham, Esq.

Trademark Examining Attorney

Law Office 127

United States Patent and Trademark Office

E: haneen.daha

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 07, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”