To: | Flow Beauty Care Inc. (fduffin@wiggin.com) |
Subject: | U.S. Trademark Application Serial No. 88359080 - MY CLEAN IS GREEN - 205276/US001 |
Sent: | December 05, 2019 07:40:23 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88359080
Mark: MY CLEAN IS GREEN
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Correspondence Address: ONE CENTURY TOWER, 265 CHURCH STREET
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Applicant: Flow Beauty Care Inc.
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Reference/Docket No. 205276/US001
Correspondence Email Address: |
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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: December 05, 2019
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).
FOREIGN REGISTRATION CERTIFICATE REQUIRED & OPTION TO DELETE SECTION 1(b) FILING 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).
IDENTIFICATION OF GOODS
The identification of goods contains wording that is overly-broad and indefinite and must be amended. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). The specific issues are set forth below.
The wording “hair treatments” and “topical comfort creams” throughout the identification is overly-broad indefinite and must be amended. Specifically, non-medicated hair treatment preparations and topical creams for cosmetic use belong in Class 3, while medicated hair treatment preparations and topical creams for medical or therapeutic use belong in Class 5. Thus, applicant must clarify the nature of the products and classify accordingly.
Additionally, the identification which begins with “medicated body and skin care preparations” is misclassified, and must be amended. Specifically, medicated body care preparations and medicated skin care preparations belong in Class 5. Thus applicant must delete this language from Class 3, and may choose to add Class 5 as discussed in the section below.
Applicant should note that medicated goods of any variety containing CBD or hemp derivatives are unlawful according to applicable federal laws, and thus if applicant chooses to retain the medicated body and skin care preparations, the trademark examining attorney may need to issue additional refusals for unlawful use.
The applicant may adopt the following, if accurate:
Class 3: Hair care preparations; hair care products, namely, shampoos, hair
conditioners, hair gels, hairsprays, hair masques and non-medicated hair treatment preparations for cosmetic purposes; beauty care products, namely, lotions and creams for hair; body wash; body creams; beauty creams; skin
and body topical comfort creams for cosmetic use; CBD infused hair care preparations; CBD infused hair care products, namely, shampoos, hair
conditioners, hair gels, hairsprays, hair masques and non-medicated hair treatment preparations for cosmetic purposes; CBD infused beauty care products, namely, lotions and creams for hair; CBD infused body wash; CBD infused body creams; CBD infused beauty
creams; CBD infused skin and body topical comfort creams for cosmetic use; medicated body and skin care
preparations, namely, hair care preparations, hair care products, namely, shampoos, hair conditioners, hair gels, hairsprays, hair masques and hair treatments, beauty care products, namely, lotions
and creams for hair, body wash, body creams, beauty creams, topical comfort creams, CBD infused hair care preparations, CBD infused hair care products, namely, shampoos, hair conditioners, hair gels,
hairsprays, hair masques and hair treatments, CBD infused beauty care products, namely, lotions and creams for hair, CBD infused body wash, CBD infused body creams, CBD infused beauty creams, CBD
infused topical comfort creams
Class 5: Medicated body and skin care
preparations, namely, hair care preparations, hair care products, namely, being shampoos, hair conditioners, hair gels,
hairsprays, hair masques and hair treatments, beauty care products, namely, being lotions and creams for hair, body wash, body
creams, beauty creams, topical comfort creams, CBD infused hair care preparations, CBD infused hair care products, namely, being shampoos, hair conditioners, hair gels, hairsprays, hair masques and hair treatments, CBD infused beauty care products, namely, being lotions and creams for hair, CBD infused body wash, CBD infused body creams, CBD infused beauty creams, CBD infused topical comfort creams [reclassified from Class 3]
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 ADVISORY – CLARIFICATION AS TO NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
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 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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one 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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Caile Reid/
Caile Reid
Examining Attorney
Law Office 123
(571) 270-0764
caile.reid@uspto.gov
RESPONSE GUIDANCE