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: 4/24/2019

 

 

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

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  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.

 

Applicant may adopt the following wording, if accurate: 

 

“Adhesives for affixing artificial nails or eyelashes,” in International Class 001;

 

“Nail kits containing materials, namely, nail polish base coat, nail polish, nail gel, nail polish top coat and nail art materials in the nature of {specify the nail art materials in International Class 003}; Nail gel; Nail gel capsules; Nail enamels; nail polish and nail paint being cosmetics; Nail care preparations, namely, {specify the common commercial name of the preparations in International Class 003, e.g. preparations for removing gel nails}; Cosmetic preparations for nail drying; Nail hardeners; Nail art stickers; False nails; At-home nail gel systems comprising nail cleaner, nail polish remover, nail polish top coat, nail polish base coat, nail gel, nail bonder, nail paint; Nail polish remover pens; Nail polish removers; Cosmetic preparations for removing gel nails, acrylic nails, and nail polish; Coloring preparations for cosmetic purposes; Body and beauty care cosmetics; Beauty balm creams; Beauty care preparations, namely, {specify the common commercial name of the preparations in International Class 003}; Preparations for body and beauty care, namely, {specify the common commercial name of the preparations in International Class 003}; Beauty gels; Beauty lotions; Beauty masks; Facial beauty masks; Beauty serums; Blush pencils; Blusher; Body art stickers; Body cream soap; Cosmetic body creams; Face and body beauty creams; Beauty creams for body care; Scented body lotions and creams; Non-medicated cosmetic creams and lotions for face and body care; Non-medicated cosmetic creams and gels for the face, hands and body; Non-medicated cosmetic powders, creams and lotions for the face, hands and body; Skin and body topical lotions, creams and oils for cosmetic use; Non-medicated cosmetic creams, milks, lotions, gels and powders for the face, hands and body; Non-medicated lotions, creams and preparations for care of the face, body, scalp, nails and hair; Body deodorants; Deodorants for body care; Body deodorant in pill form; Body sprays used as personal deodorants and fragrances; Moisturizing body lotions; Skin moisturizer masks; Gel eye masks; Cosmetic facial masks; Cosmetic masks; {Specify area of use, e.g., face, body, hand, etc.} moisturizers; Skin moisturizers; Facial moisturizers; Hair moisturizers; Cosmetic facial moisturizers; Anti-ageing moisturizers; After-sun moisturizers; Anti-aging moisturizer; Hair gels and hair sprays; Creams, oils, lotions, sprays, pencils and balms for cosmetic purposes; Gels, sprays, mousses and balms for hair styling and hair care; Non-medicated scrubs for the face and body; Depilatory and exfoliating preparations; Scented body sprays; Body washes; Liquid soap for body washing; Aromatherapy preparations; Essential oils for use in aromatherapy; Potpourri sachets for incorporating in aromatherapy pillows; Aromatic oils; Aromatic essential oils; Aromatic potpourris; Artificial eyelashes; False nails; Bases for flower perfumes; Bath and shower foam; Bath and shower gels; Bath and shower preparations; Bath and shower gels and salts not for medical purposes; Bath bombs; Bath milks; Bath flakes; Bath creams; Bath fizzies; Bath foams; Hair colouring preparations; Hair colour removers; Hair-colouring and hair decolorant preparations; Hair colourants, Colour rinses for the hair; Colour-removing preparations for hair; Preparations for cleaning, tinting, colouring, bleaching, setting and styling of hair; Hair conditioners; Hair shampoos and conditioners; Baby hair conditioner; Hair balsam; Non-medicated hair balms; Hair oils; Hair mascara; Hair lighteners; Cosmetic creams for firming skin around eyes; Anti-aging skincare preparations; Facial cleansers; Facial cosmetic preparations; Facial lotions; Cosmetic facial preparations, Facial make-up; Facial care cosmetic preparations; Facial cleansing grains; Facial cream for cosmetic use; Facial peel preparations for cosmetic purposes; Wrinkle-minimizing cosmetic preparations for topical facial use; Cuticle softeners, Cuticle cream; Shampoos and hair conditioners; 3-in-1 hair shampoos; Dandruff hair shampoo; Hair shampoo; Skin whitening creams; Skin whitening preparations; Foundation creams; Liquid make-up foundation; Make-up foundation; Eye shadows; Eyeliners; Eye pencils; Eyebrow pencils; Eyebrow cosmetics; Eyeliner pencils; Eye make-up; Under-eye enhancers; Eye make-up removers; Self-adhesive false eyebrows; Cosmetic preparations for eyelashes; Fragrance sachets for eye pillows; Adhesives for affixing false eyebrows; Adhesives for affixing false eyelashes; Eye-washes, not for medical purposes; Eyebrow colours in the form of pencils and powders; Decorative transfers for cosmetic purposes; Decorative transfers for fingernails for cosmetic purposes; Creamy rouges; Cosmetic rouges; Liquid rouges; Cotton puffs for cosmetic purposes; Cotton wool and cotton buds for cosmetic purposes; Cotton wool balls for cosmetic use; Cosmetics; Decorative cosmetics; Cosmetics and toiletries; Lip stains; Skin care cosmetics; Sun protection oils; Colognes, perfumes and cosmetics; Cosmetics and make-up; Tissues impregnated with cosmetic lotions; Cosmetics for personal use; After-sun milks; After-sun cosmetic gels; After-sun oils; Cosmetics for children; Cosmetics and cosmetic preparations; Cosmetic sun-protecting preparations for lips; Perfumery, essential oils, cosmetics, hair lotions; Cosmetics for use on the skin; Cosmetics in the form of lotions; Tanning and after-sun milks, gels and oils; Cosmetics in the form of milks, lotions and emulsions; Perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, gels, lotions and creams; Theatrical make-up; Make-up removing preparations; Make-up powder; Make-up pencils, Make-up for the body; Make-up removing milks; Make-up removing lotions; Make-up primers; Make-up removing creams; Make-up bases in the form of pastes; Make-up for compacts; Make-up preparations; Make-up; Make-up preparations for the face and body; Make-up removing gels; Make-up for the face and body; Shaving and after-shave preparations; Shaving balm; Shaving creams; Shaving foam; Shaving gels; Shaving lotions; Shaving mousse; Teeth whitening strips impregnated with teeth whitening preparations; Nail polish remover; Nail polish top coat; Nail polish base coat; Nail gel; Nail bonder and nail paint,” in International Class 003;

 

“Home manicure sets; Nail polish or gel device, namely, {please insert the common commercial names in Class 008} for use as a hand tool featuring software and hardware needed to accurately paint finger and toe nail in a timely manner; Nail cleaner; Manicure device, namely, {please insert the common commercial names in Class 008}; Manicure device for use as a hand tool that removes existing nail polish and nail gel and then paints nails of fingers and toes in a fully automated manner; Gel polish removal device, namely, {specify the common commercial name, e.g., nail buffer, nail polish scraper as a hand tool}; Electrolysis apparatus for hair removal; Electric hair straightener; Electric hand-held hair styling irons; Electric hair styling irons; Electric or non-electric depilatory appliances, namely, {please insert the common commercial names in Class 008}; Electric razors; Razor cases; Razors; Safety razors; Electric beard trimmers; Moustache and beard trimmers,” in International Class 008;

 

“Manicure device that dries nail polish and nail gel of fingers and toes in a fully automated manner; Nail drying machines for beauty salons; Nail drying machines for home and beauty salon use; Ultraviolet gel manicure lights and lamps; UV lamps for drying nail gel manicure; Nail dryer machine being an electric nail drying fan or nail lamp; Nail polish or gel device comprising software and hardware for nail drying; Hair dryers; Electric hair dryers; Handheld electric hair dryers; Electronic facial steamers; Electric facial mask treatment device namely, {please insert the common commercial names in Class 011} featuring thermo, cryo or LED light therapy and sonic pulsation,” in International Class 011;

 

“Electric make-up removing appliances; Appliances for removing make-up, electric; Make-up removing appliances; Electric nail polish removing appliances; Electric mask removing appliances; Electric toothbrushes; Heads for electric toothbrushes; Electric face cleansing brushes; Electric rotating hair brushes; Electrically-heated hair brushes; Hair brushes; Hot air hair brushes; Hair tinting brushes; Shaving brushes; Shaving brush stands; Shaving brush holders; Shaving bowls; Stands for shaving brushes; Teeth whitening trays sold empty for home use; Cosmetic applicators sold empty for brushes; sonic oscillating brushes for cosmetic purposes; electric cosmetic brushes,” in International Class 021; and

 

“Hair curlers, electric and non-electric, other than hand implements,” in International Class 026.

 

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 APPLICATION REQUIREMENTS

 

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).  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 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).

 

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.  

 

 

 

/StevenW.Jackson/

Steven W. Jackson

Trademark Attorney

Law Office 107

steven.jackson@uspto.gov

571-272-9409

 

 

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 4/24/2019 FOR U.S. APPLICATION SERIAL NO. 88295495

 

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 4/24/2019 (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.