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: 4/17/2019

 

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.

 

SUMMARY OF ISSUES:

• Section 2(e)1 Merely Descriptive Refusal
• Indefinite Identification of Goods

 

 

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).

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl& Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In the present case, the applicant has applied to register the mark NANOMD for “Cosmetic preparations for body care; Body and beauty care cosmetics; Cosmetic preparations; Cosmetic preparations for skin renewal; Cosmetic skin fresheners; Cosmetic preparations for skin care; Cosmetics articles; cosmetics articles for personal use; cosmetic creams; cosmetics goods for care of the skin; cosmetic kits comprised of lipstick, lip gloss, make-up preparations, lotions, and emollients; cosmetic masks; cosmetic skin moisturizers; cosmetic face powder; cosmetic preparations; cosmetic preparations for cleansing the skin; cosmetic preparations for skin care; cosmetic preparations for use on the face; cosmetic preparations for use on the skin; cosmetic preparations for protection against the sun; cosmetic preparations for skin care; cosmetic skin care preparations; cosmetic soaps; facial care products, namely, facial beauty masks, facial cream, facial wash, facial moisturizer; facial care products in the form of face creams; facial care products in the form of face lotions; facial care products in the form of face milks; facial creams; skin lighteners; skincare cosmetics; moisturizers; Skin moisturizers; facial masks; facial moisturizers; facial mask packs for cosmetic purposes; facial scrubs; facial toners; facial washes; night creams; Beauty serum for cosmetic use; skin balms; skin care creams; skin care lotions; Non-medicated skin care preparations; skin care products, namely, skin emollients, and skin whitening creams; skin cleaners; Non-medicated skin cleansing cream; Non-medicated skin cleansing preparations; Non-medicated skincare preparations; Cosmetic sun protecting creams; sun protection products in the nature of sun block; sun screen preparations; all goods listed above containing small molecules”; “Nutritional supplements; Vitamin supplements; Dietary, vitamin and nutritional supplements containing phytonutrients; Dietary, vitamin and nutritional supplements containing antioxidants; Dietary, vitamin and nutritional supplements for promoting healthy skin; Dietary, vitamin and nutritional supplements in the form of tablets; Pharmaceutical, nutraceutical and cosmeceutical preparations for skin care; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Medicated skin care preparations; Dietary supplements for humans for whitening, brightening and evening skin tone from within; Dietary supplements for humans for hair growth stimulation from within; medicated cosmetics; all goods listed above containing small molecules” and “Online retail store services, retail store services, wholesale store services, mail order and web-based catalog services, and the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in the field of health products, nutritional supplements, and cosmetics and skin care products; direct marketing and marketing agency services for dietary supplements for humans, cosmetics, and skin care products; advertising services; online advertising and promotion on a computer network; street dissemination of advertising materials; television advertising; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes”.  The term NANO is defined by Merriam Webster’s dictionary to mean “nanotechnology”. The term MD is the abbreviation for referring to a medical doctor. Therefore the applicants mark merely describes that the cosmetics and supplements are using nanotechnology and have been formulated in whole or part by a medical doctor.  The applicants own website states “NanoMD® Bright was developed by a multi-disciplinary team of world-class researchers and developers. It utilizes nanotechnologies that radically improve the bioavailability of chemical compounds used in pharmaceuticals & nutraceuticals”.   Please see attached Internet evidence and third party registrations that show the term MD being disclaimed.  This shows how MD is treated descriptively for similar goods and services.

 

Therefore, the mark NANOMD, as applied to the identified goods and services, merely describes a feature of applicant’s goods and services.  Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

 

Some of the wording below in the identification of goods is indefinite and must be clarified.  Please see reasoning and suggestions below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 003 for “cosmetic preparations; cosmetic preparations for skin care.”  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).

 

Applicant may substitute the following wording, if accurate: 

 

Cosmetic preparations for body care; Body and beauty care cosmetics; Cosmetic preparations; Cosmetic preparations for skin renewal; Cosmetic skin fresheners; Cosmetic preparations for skin care; Cosmetics articles, namely, {specify the type of cosmetic articles, or the common commercial name}; cosmetics articles for personal use namely, {specify the type of cosmetic articles, or the common commercial name}; cosmetic creams; cosmetics goods for care of the skin namely, {specify the type of cosmetic goods, or the common commercial name}; cosmetic kits comprised of lipstick, lip gloss, make-up preparations, lotions, and emollients; cosmetic masks; cosmetic skin moisturizers; cosmetic face powder; cosmetic preparations; cosmetic preparations for cleansing the skin; cosmetic preparations for skin care; cosmetic preparations for use on the face; cosmetic preparations for use on the skin; cosmetic preparations for protection against the sun; cosmetic preparations for skin care; cosmetic skin care preparations; cosmetic soaps; facial care products, namely, facial beauty masks, facial cream, facial wash, facial moisturizer; facial care products in the form of face creams; facial care products in the form of face lotions; facial care products in the form of face milks; facial creams; skin lighteners; skincare cosmetics; {Specify area of use, e.g., face, body, hand, etc.} moisturizers; Skin moisturizers; facial masks; facial moisturizers; facial mask packs for cosmetic purposes; facial scrubs; facial toners; facial washes; night creams; Beauty serum for cosmetic use; skin balms; skin care creams; skin care lotions; Non-medicated skin care preparations; skin care products, namely, skin emollients, and skin whitening creams; skin cleaners; Non-medicated skin cleansing cream; Non-medicated skin cleansing preparations; Non-medicated skincare preparations; Cosmetic sun protecting creams; sun protection products in the nature of sun block; sun screen preparations; all goods listed above containing small molecules in International Class 003;

 

Nutritional supplements; Vitamin supplements; Dietary, vitamin and nutritional supplements containing phytonutrients; Dietary, vitamin and nutritional supplements containing antioxidants; Dietary, vitamin and nutritional supplements for promoting healthy skin; Dietary, vitamin and nutritional supplements in the form of tablets; Pharmaceutical and nutraceutical preparations for skin care and cosmeceutical preparations for skin care, namely, medicated cosmetics; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Medicated skin care preparations; Dietary supplements for humans for whitening, brightening and evening skin tone from within; Dietary supplements for humans for hair growth stimulation from within; medicated cosmetics; all goods listed above containing small molecules International Class 005.

 

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.

 

SUPPLEMENTAL REGISTER

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

ASSISTANCE

 

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

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Lakeisha S. Munn Lewis/

Trademark Examining Attorney

Law Office 105

571-272-1910

lakeisha.lewis@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 4/17/2019 FOR U.S. APPLICATION SERIAL NO. 88286857

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/17/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Lakeisha S. Munn Lewis/

Trademark Examining Attorney

Law Office 105

571-272-1910

lakeisha.lewis@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.