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: 4/2/2019

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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).

 

SUMMARY OF ISSUES:

• Classification and Identification of Goods and Services
• Multiple Class Application Requirements
• Disclaimer Required
• Foreign Registration Certificate Required

 

CLASSIFICATION AND IDENTIFICATION OF GOODS

 

Applicant’s goods are identified as:

 

“sanitary preparations for personal hygiene including menstruation and incontinence, namely, disposable and washable menstrual pads, incontinence pads, sanitary pads, sanitary panty liners, sanitary tampons, menstruation tampons, sanitary napkins, sanitary towels, sanitary panties, sanitary knickers, menstruation knickers and sanitary pants, adult and infant diapers; Clothing, namely, underwear, namely, bras, teddies, bodices, slips, camisoles, girdles, corsets, panties, pants, boxers and knickers; hosiery, namely, socks, stockings and tights, sleep wear, namely, pajamas and night dresses, swim wear, namely, bathing trunks, bathing drawers, bathing suits and bikinis, Tshirts, shirts, sweatshirts, dresses, hoodies, sweaters, shorts, skirts, skorts, pants, robes, aprons, leotard, leggings, leg warmers, scarves and headbands, clothing for pregnancy and post partum, namely, belly bands, nursing shirts and nursing bras, baby clothing and accessories, namely, sleep wear, namely, pajamas, one piece infant sleepers and night dresses, Tshirts, shirts, sweatshirts, dresses, hoodies, sweaters, robes, shorts, skirts, skorts, pants, socks, wash cloths, bibs and bath towels; Operation of a website providing information about menstruation and menopause; On-line sale of feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes; accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry; wholesale sales of feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes; accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry” in International Class 5.

 

Applicant has classified the following goods in International Class 5: “wash cloths”, “bath towels” and “Operation of a website providing information about menstruation and menopause; On-line sale of feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes; accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry; wholesale sales of feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes; accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry”.  However, the proper classification for each item is as set forth below. 

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted.  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 application requirements specified in this Office action.

 

The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).

 

Applicant must also correct the punctuation in the identification to clarify the individual items in the list of goods.  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. 

 

Moreover, applicant must specify the nature of its “ adult and infant diapers”, “boxers”, “belly bands”, “bibs”, “Operation of a website providing information about menstruation and menopause”, “on-line sale” and “wholesale services”” as set forth below.

 

Applicant may adopt the following identification of goods, if accurate.  The suggested additions are in bold-type and suggested deletions in strikethrough formatting.

 

International Class 5: “sanitary preparations for personal hygiene , including particularly, menstruation and incontinence, namely, disposable and washable menstrual pads, incontinence pads, sanitary pads, sanitary panty liners, sanitary tampons, menstruation tampons, sanitary napkins, sanitary towels, sanitary panties, sanitary knickers, menstruation knickers and sanitary pants; adult diapers and infant cloth diapers”

 

International Class 24: “baby wash cloths; baby bath towels”

 

International Class 25: “Clothing, namely, underwear , namely, in the nature of bras, teddies, bodices, slips, camisoles, girdles, corsets, panties, pants, boxers shorts and knickers; hosiery, namely, socks, stockings and tights ; sleepwear , namely, pajamas and night dresses ; swim wear, namely, bathing trunks, bathing drawers, bathing suits and bikinis ; T-shirts , shirts, sweatshirts, dresses, hoodies, sweaters, shorts, skirts, skorts, pants, robes, aprons, leotards , leggings, leg warmers, scarves and headbands; clothing for pregnancy and post partum, namely, belly bands in the nature of maternity bands, nursing shirts and nursing bras; baby clothing and accessories, namely, sleep wear , namely, in the nature of pajamas, one piece infant sleepers and night dresses , T-shirts , shirts, sweatshirts, dresses, hoodies, sweaters, robes, shorts, skirts, skorts, pants, socks, wash cloths [moved to Class 24] , bibs not of paper and bath towels [moved to Class 24]”

 

International Class 35: “Operation of a website providing information about menstruation and menopause; [moved to Class 44] On-line sale of retail store services featuring feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes , accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry; wholesale store services featuring feminine hygiene products, menstrual cups, underwear for menstruation and incontinence, diapers, bags, cleaning supplies, tea, vitamins, dietary supplements, clothing, baby clothing and accessories, toys, personal body care products, make up and cosmetics, kegel and pelvic floor exercise equipment, intimate personal massagers, condoms, massage oils, personal lubricants, personal wipes , accessories for treating the symptoms of premenstrual pregnancy, post partum and menopause, fertility indicators, menopause indicators, pregnancy kits, household linens and textiles, reusable gift wrapping, kitchen supplies, food and drink storage containers, books, journals, greeting cards, calendars, candles, candle holders, prerecorded DVDs and jewelry ”

 

International Class 44: “Providing Operation of a website featuring providing information about menstruation and menopause”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and 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 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 CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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.

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

Please note: Applicant paid filing fees for one international class.

DISCLAIMER REQUIRED

 

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 “PERIOD” 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). 

 

A “period” is when a woman bleed from her womb once a month and is also known as menstruation.  See attached dictionary definitions from Collins.  This wording appears in applicant’s identification of goods and services.  That is, applicant provides sanitary preparations for personal hygiene, including menstruation.  Therefore, the wording “PERIOD” merely describes a feature of applicant’s goods and services because applicant offers products for use during the menstruation period.

 

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

 

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

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

GENERAL RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

CONTACT INFORMATION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06

 

 

 

/Brittany Johnson/

Examining Attorney

Law Office 126

(571) 270-3731

brittany.johnson@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 4/2/2019 FOR U.S. APPLICATION SERIAL NO. 88258657

 

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 4/2/2019 (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.