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: 5/23/2019

 

 

 

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).

 

SUMMARY OF ISSUES

 

• Identification and Classification of Goods
• Multiple-Class Application Requirements

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

Applicant has classified “eyeliner brushes” in International Class 03; however, the proper classification is International Class 21.  Therefore, applicant may respond by (1) adding International Class 21 to the application and reclassifying these goods in the proper international class, (2) deleting “eyeliner brushes” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  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 requirements specified in this Office action.

 

The identification of goods 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 that have been deleted from registrations or in an affidavit of incontestability to indicate goods 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 or bracketed information into the description of the goods.

 

Applicant must 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. 

 

Applicant has included the term “and/or” or “or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

The wording “Bleaching preparations and other substances for laundry use; scented body lotions, creams and butters; moisturisers; cleansing lotions; perfumed shimmer sticks; compacts; anti-aging treatments; all in one bath and hair cleansers; terpenes; baby wipes; cosmetic dyes; concealers” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

 

The inclusion of the term “products” in the clauses “fragrances and fragrance products for personal use; non-medicated skin care beauty products; hair care products” creates ambiguity as to the nature of the goods and therefore it must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “make-up kits; shaving kits” in the identification of goods is indefinite and must be clarified because it fails to identify what the kits are comprised of.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “soaps; skin balms; skin care preparations; preparations for the bath and shower; eye balms; cleansers; beauty care products; skin care products for personal use, namely, face, eye and lip moisturisers; lotions and serums; mouthwash; after-shave preparations; sunscreen; sun protection oils, lotions, creams and gels; after-sun oils, lotions, creams and gels; toiletries; cotton sticks; cotton wool” in the identification of goods for International Class 03 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “non-medicated soaps”, “non-medicated balms for use on skin”, “non-medicated skin care preparations”, “non-medicated preparations for the bath and shower”, “non-medicated eye balms”, “cleansers for intimate personal hygiene purposes, non-medicated”, “non-medicated skin care products for personal use, namely, face, eye and lip moisturisers”, “non-medicated lotions and serums”, “non-medicated mouthwash”, “after shave lotions”, “sunscreen preparations”, “cotton sticks for cosmetic purposes”, and “cotton wool for cosmetic purposes” in Class 03 or “medicated soaps”, “medicated balms for treatment of skin”, “medicated skin care preparations”, “medicated preparations for the bath and shower”, “medicated eye balms”, “medical cleansers for skin and wounds”, “medicated skin care products for personal use, namely, face, eye and lip moisturisers”, “medicated lotions and serums”, “medicated mouthwash”, “medicated after-shave lotions”, “medicated sunscreen”, “cotton sticks for medical purposes”, and “cotton wool for medical purposes” in Class 05.

 

The wording “highlighter” in the identification of goods for International Class 03 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “hair highlighting spray” in Class 03 or “highlighter pens” in Class 16.

 

The wording “masks” in the identification of goods for International Class 03 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “cosmetic masks” in Class 03 or “costume masks” in Class 28.

 

The wording “exfoliators” in the identification of goods for International Class 03 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “exfoliant creams” in Class 03 or “exfoliating pads” in Class 21.

 

The wording “cleaning face masks for the face” in the identification of goods for International Class 03 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “protective face masks not for medical purposes” in Class 09.

 

Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font): 

 

Class 03: Bleaching preparations and other substances for laundry use, namely, {specify other substances e.g., laundry detergents}; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; eau de parfum; eau de toilette; cologne; fragrances for personal use; massage oils; cosmetic preparations for skin care; non-medicated balms for use on skin; skin care cosmetics; non-medicated skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels and bubble bath; scented body lotions, creams and butters; scented moisturising skin cream; skin moisturizers; body lotions, creams and body butters; baby lotion; baby oil; moisturising creams; scented skin soap; body oil; skin cleansing lotion; face, lip and cheek make-up; face powder; face glitter; glitter for cosmetic purposes; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks in the nature of {e.g., cosmetics}; epilatory strips; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye gloss, non-medicated eye balms; eyebrow colours; eyebrow cosmetics; eyebrow pencils; false eyebrows; false eyelashes; highlighter, namely, hair highlighting spray; cosmetic masks; cleansers for intimate personal hygiene purposes, non-medicated; skin toners; skin clarifiers; exfoliators, namely, exfoliant creams; foundation make-up; blusher; cosmetics, namely, compacts; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products, namely, {specify Class 03 products}; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; make-up kits comprised of {indicate non-medicated cosmetics, e.g., lipstick, lip gloss, etc.}; non-medicated beauty preparations; non-medicated skin care beauty products, namely, {specify Class 03 products}; non-medicated skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions for cosmetic purposes and beauty serums; anti-aging treatments, namely, {e.g., creams, toner, moisturizer, etc.}; foundation for the face; hair care products, namely, shampoo, hair conditioners, hair mouse, hair moulding creams, hair gel and hair spray; dry shampoos; all in one bath and hair cleansers in the nature of 3-in-1 non-medicated soap bars for use as soap, shampoo and conditioner; non-medicated mouthwash; nail care preparations, nail polish, nail straighteners and nail polish remover; false nails; shaving cream; shaving gel; shaving kits comprised of {indicate particular goods, e.g., shaving gels, shaving creams, shaving balms, etc.}; after-shave cream; after-shave lotion; shoe polish; depilatory preparations; personal deodorant; antiperspirants; potpourri; nail care preparations; nail varnish and remover thereof; sun tanning preparations; sunscreen preparations; non-medicated sun protection oils, lotions, creams and gels; after-sun oils, lotions, creams and gels; cosmetic preparations for skin tanning; artificial tanning preparations; tanning lotions, tanning gels, tanning oils; talcum powder; terpenes being essential oils; tissues impregnated with cosmetic lotions; toilet water; non-medicated toiletry preparations; decorative transfers for cosmetic purpose; varnish-removing preparations; washing preparations; non-medicated preparations for the hair and for the care of the skin; non-medicated toiletries for babies and infants; tooth paste and tooth gel; tooth whitening creams, gels and pastes; tooth bleaching preparations; petroleum jelly for cosmetic purposes; pre-impregnated wipes and towels with personal cleansing and cosmetic lotions; pre-impregnated wipes and towels for hygienic purposes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; baby wipes impregnated with cleaning preparations; cosmetic dyes in the nature of hair dyes; hair dyes; shoe wax; facial concealer; lip liner; sun bronzers; make up for contouring the face; make up primer; make up setting spray

 

Class 05: Medicated soaps; medicated balms for treatment of skin; medicated skin care preparations; medicated eye balms; medical cleaners for skin and wounds; exfoliators, namely, exfoliating pads; medicated skin care products for personal use, namely, face, eye and lip moisturizers; pharmaceutical skin lotions and medicated hair serums; medicated mouthwash; sunscreen cream; medicated toiletry preparations; cotton sticks for medical purposes; cotton wool for medical purposes

 

Class 09: Protective face masks not for medical purposes

 

Class 16: Highlighting pens

 

Class 21: Cosmetic brushes, namely, eyeliner brushes

 

Class 28: Costume masks

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or 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/or 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 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 six (6) classes; however, applicant submitted a fee sufficient for only one (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.

 

RESPONSE GUIDELINES

 

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.  

 

 

 

/Katrina J. Goodwin/

Examining Attorney

Law Office 122

571-272-7605

Katrina.Goodwin@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 5/23/2019 FOR U.S. APPLICATION SERIAL NO. 88332162

 

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 5/23/2019 (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.