To: | Henkel AG & Co. KGaA (eric.westerberg@henkel.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88362570 - BYOTICS - bYOtics |
Sent: | 6/2/2019 5:53:49 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88362570
MARK: BYOTICS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Henkel AG & Co. KGaA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/2/2019
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).
SUMMARY OF ISSUES:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Applicant’s mark is BYOTICS for “non-medicated cosmetics; non-medicated means for body and beauty care; non-medicated dentifrices; perfumery; essential oils” in Class 3.
Here, BYOTICS appears to be a fanciful spelling of the word “Biotics”, which means “Produced or caused by living organisms”. See http://www.ahdictionary.com/word/search.html?q=biotic; http://www.ahdictionary.com/word/search.html?q=byotics (defining BIOTIC and showing no results for BYOTICS). The wording BIOTICS is used on cosmetics to indicate goods that contain compounds derived from living things or are designed to support good bacteria. See http://www.sephora.com/product/multi-biotic-moisturizer-P443832 (offering a multi-biotic moisturizer); http://www.allure.com/gallery/probiotics-skin-care-products (stating “Just as important as the type of biotic in the bottle — be it a whole living organism, broken-up bacteria, bug food, or a by-product — is the specific strain, as each species has its own unique properties and purpose.”); http://www.glowbiotics.com/ (offering probiotic skincare); http://laflore.com/why-probiotic-skincare/ (stating a company’s “patent-pending technology delivers a diverse matrix of touch-activated live, pre, pro and post-biotics that strengthen and improve the skin’s microbiome and provide time-released actives for increased immune support and optimally healthy skin.”); http://www.oskiaskincare.com/skin-nutrition/patented-actives/prebiotics/ (discussing pre-biotics in skincare); http://www.kickstarter.com/projects/gallinee/gallinee-revolutionary-biotic-skincare (stating a skincare product contains “Triple Biotics”). Therefore, this wording is merely descriptive of the goods.
Therefore, as the applied-for mark is a novel spelling of the term “BIOTICS” and this term is descriptive of the ingredients of cosmetics, the mark is merely descriptive.
Therefore, because Applicant’s mark is merely descriptive of the goods in the application, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Response to Section 2(e)(1) Refusal – Merely Descriptive
SUPPLEMENTAL REGISTER ADVISORY
REQUEST FOR INFORMATION REQUIREMENT
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
IDENTIFICATION OF GOODS AMENDMENTS REQUIRED
The wording “non-medicated means for body and beauty care” is indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must clarify the nature of these non-medicated means, e.g., body lotions, hair shampoo, cosmetics, etc.
Applicant may adopt the following Identification, if accurate:
Class 3: non-medicated cosmetics; non-medicated means for body and beauty care, namely, [clarify goods, e.g., body lotions, hair shampoo, cosmetics, etc.]; non-medicated dentifrices; perfumery; essential oils
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.
OWNERSHIP INFORMATION ADVISORY
In the application, applicant indicated “German citizenship” in the information “NAME OF ALL GENERAL PARTNERS, ACTIVE MEMBERS, INDIVIDUAL, TRUSTEES, OR EXECUTORS, AND CITIZENSHIP/ INCORPORATION”.
Applicant has not provided the names of the general partners, and so the citizenship for these unnamed partners is unclear.
However, applicant is a German limited partnership. Applicant should note that, for a foreign partnership, the names and citizenships of general partners is not required. See TMEP §803.03(b). Therefore, applicant may delete this information.
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.
/Alison Keeley/
Examining Attorney
Law Office 113
(571) 272 - 4514
Alison.Keeley@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.