Notation to File

TATI

TATI, INC.

RE: 3171-001 US/ Appl. No. 88378317 for “TATI” in Class 3 - Office Action Issued Ms. Nassim, I cannot accept argument by email or phone regarding the Section 2(d) refusal. You will need to file a formal response with your argument. Further, many of your arguments raise issues that were specifically discussed in the initial Office action. I’ve annotated your argument below with copies of the relevant paragraphs from that action and highlighted in yellow the most relevant information. I’ve also added some additional explanation addressing your last two points, with the most relevant information highlighted in green, which I will include in any Final Office action I issue. I can only enter amendments to the identification (in an Examiner’s Amendment) if the application is otherwise in condition for publication or suspension, which is not the case here. So, you will need to submit those amendments in a formal response as well. If you need me to clarify anything in the Office action, please let me know and we can set up a time for that next week. Otherwise, I will review and take appropriate action on your arguments when they are submitted in a formal response. Thank you. Kim Teresa Moninghoff Trademark Examining Attorney Law Office 113 Phone: 571-272-4738 All informal e-mail communications relevant to this application will be placed in the official application record. From: Sunny Nassim [mailto:sunny@jrsnd.com] Sent: Thursday, July 11, 2019 6:23 PM To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV> Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com> Subject: 3171-001 US/ Appl. No. 88378317 for “TATI” in Class 3 - Office Action Issued Dear Kim, We hope this email finds you well. My name is Sunny Nassim and I am the attorney of record for Appl. No. 88378317 for “TATI” (Word) in Class 3. I just left you a message regarding the recent Office Action we received for our client’s mark citing the following issues: 1. Section 2(d) Refusal – Likelihood of Confusion with Reg. No. 5173486 for “TATI” in Class 21 and Reg. No. 5754076 for “TATTI LASHES” in Classes 3 and 35 With respect to the 2(d) refusal for Reg. No. 5173486 for “TATI” in Class 21, as you will see, our client specifically avoided any mention of nail care and brushes in general due to the preexistence of this mark. This cited mark (First Cited Mark) covers very specific goods in a different class and we believe that it should not be deemed similar due to the difference in the goods. As demonstrated in the identification requirement below, the applicant’s goods are broad enough to include the applicators included in Registration No. 5173486. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)). The applicant’s other goods are closely related to the registrant’s goods because cosmetics and cosmetic applicators are commonly sold together under the same mark for use together. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of 15 third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely the various types of cosmetics, makeup, fragrance, and perfume in the applicant’s identification, are of a kind that may emanate from a single source under a single mark, as nail and makeup brushes and makeup sponges. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). Further, with respect to Reg. No. 5754076 for “TATTI LASHES” in Classes 3 and 35 (Second Cited Mark), this mark includes very specific goods and services all related to eyelashes in Classes 3 and 35. Referring to the thirteen non-exclusive factors to evaluate the likelihood of confusion set forth by the Federal Circuit in application of E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), we respectfully state that there is no likelihood of confusion since the marks must be considered in their entireties. The applicant’s goods include cosmetics, including cosmetic preparations for eyelashes, and cosmetic pads, which are broad enough to include the registrant’s “cosmetic coating preparations for artificial eyelashes and eyelash extensions; eyelash extension pads for cosmetic purposes; under-eye gel patches and pads for cosmetic purposes.” The registrant’s mascara also appears to be a “cosmetic coating preparation[] for artificial eyelashes and eyelash extensions.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)). The applicant’s other goods are other types of cosmetics and fragrances that are commonly sold under the same marks as artificial eyelashes and goods used to affix the eyelashes, and specifically include types of eye makeup that would be used together with artificial eyelashes. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of 15 third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely the various types of cosmetics, makeup, fragrance, and perfume in the applicant’s identification, are of a kind that may emanate from a single source under a single mark, as artificial eyelashes, eyelash cosmetics, and eyelash adhesives. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). In comparing our client’s Mark and the Second Cited Mark, the marks must be compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, (Fed. Cir. 2012). See e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272, 273 (C.C.P.A. 1974) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”) Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Our client respectfully states that we believe, at the time of the Examination, there was a mistake in failing to give due weight to the differences between our client’s Mark and the Second Cited Mark. “Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight." In re Hearst, 982 F.2d 493, 494 (Fed.Cir. 1992). In Hearst, the Applicant sought to register VARGA GIRL for calendars. The Trademark Trial and Appeal Board refused registration in light of the prior registration VARGAS, registered for posters, calendars, greeting cards and related goods. On Appeal, the Federal Circuit reversed the Board's refusal. The additional term LASHES in the registered mark is a generic term for the registrant’s goods and goods featured by the registrant’s services, and has been disclaimed. This term does not change the connotation of the dominant term TATTI in that mark. The appearance, sound, sight, and commercial impression of “TATTI LASHES” derive significant contribution from the component “LASHES”. Moreover, this registration covers very specific goods and services all related to “eyelashes” in Classes 3 and 35. Clearly, the owner of this mark wanted to limit the mark only to “eyelashes” otherwise, it would have sought registration for “TATTI” alone without the descriptor “LASHES” and would not have limited the goods/services to those relating to “eyelashes” only. We are of the opinion that by stressing the portion "TATTI" and diminishing the portion “LASHES”, there is an inappropriate shift in the overall impression of the mark. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that §2(d) of the Lanham Act seeks to prevent.").; In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

NOTE TO THE FILE

SERIAL NUMBER: 88378317

DATE:    07/22/2019

NAME: kmoninghoff

NOTE:

Searched:
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Checked:
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     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
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     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

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     Translation statement                  Re-imaged standard character
                                            drawing
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     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

X   OTHER:

From: Moninghoff, Kim
Sent: Friday, July 12, 2019 4:27 PM
To: Sunny Nassim <sunny@jrsnd.com>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>
Subject: RE: 3171-001 US/ Appl. No. 88378317 for “TATI” in Class 3 - Office Action Issued

Ms. Nassim,

I cannot accept argument by email or phone regarding the Section 2(d) refusal. You will need to file a formal response with your argument. Further, many of your arguments raise issues that were specifically discussed in the initial Office action. I’ve annotated your argument below with copies of the relevant paragraphs from that action and highlighted in yellow the most relevant information.

I’ve also added some additional explanation addressing your last two points, with the most relevant information highlighted in green, which I will include in any Final Office action I issue.

I can only enter amendments to the identification (in an Examiner’s Amendment) if the application is otherwise in condition for publication or suspension, which is not the case here. So, you will need to submit those amendments in a formal response as well.

If you need me to clarify anything in the Office action, please let me know and we can set up a time for that next week. Otherwise, I will review and take appropriate action on your arguments when they are submitted in a formal response. Thank you.

Kim Teresa Moninghoff

Trademark Examining Attorney

Law Office 113

Phone: 571-272-4738

All informal e-mail communications relevant to this application will be placed in the official application record.

From: Sunny Nassim [mailto:sunny@jrsnd.com]
Sent: Thursday, July 11, 2019 6:23 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: 3171-001 US/ Appl. No. 88378317 for “TATI” in Class 3 - Office Action Issued

Dear Kim,

We hope this email finds you well. My name is Sunny Nassim and I am the attorney of record for Appl. No. 88378317 for “TATI” (Word) in Class 3. I just left you a message regarding the recent Office Action we received for our client’s mark citing the following issues:

1.    Section 2(d) Refusal – Likelihood of Confusion with Reg. No. 5173486 for “TATI” in Class 21 and Reg. No. 5754076 for “TATTI LASHES” in Classes 3 and 35

With respect to the 2(d) refusal for Reg. No. 5173486 for “TATI” in Class 21, as you will see, our client specifically avoided any mention of nail care and brushes in general due to the preexistence of this mark. This cited mark (First Cited Mark) covers very specific goods in a different class and we believe that it should not be deemed similar due to the difference in the goods.

As demonstrated in the identification requirement below, the applicant’s goods are broad enough to include the applicators included in Registration No. 5173486. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)). The applicant’s other goods are closely related to the registrant’s goods because cosmetics and cosmetic applicators are commonly sold together under the same mark for use together.

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of 15 third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely the various types of cosmetics, makeup, fragrance, and perfume in the applicant’s identification, are of a kind that may emanate from a single source under a single mark, as nail and makeup brushes and makeup sponges. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

Further, with respect to Reg. No. 5754076 for “TATTI LASHES” in Classes 3 and 35 (Second Cited Mark), this mark includes very specific goods and services all related to eyelashes in Classes 3 and 35. Referring to the thirteen non-exclusive factors to evaluate the likelihood of confusion set forth by the Federal Circuit in application of E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), we respectfully state that there is no likelihood of confusion since the marks must be considered in their entireties.

The applicant’s goods include cosmetics, including cosmetic preparations for eyelashes, and cosmetic pads, which are broad enough to include the registrant’s “cosmetic coating preparations for artificial eyelashes and eyelash extensions; eyelash extension pads for cosmetic purposes; under-eye gel patches and pads for cosmetic purposes.” The registrant’s mascara also appears to be a “cosmetic coating preparation[] for artificial eyelashes and eyelash extensions.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)). The applicant’s other goods are other types of cosmetics and fragrances that are commonly sold under the same marks as artificial eyelashes and goods used to affix the eyelashes, and specifically include types of eye makeup that would be used together with artificial eyelashes.

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of 15 third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely the various types of cosmetics, makeup, fragrance, and perfume in the applicant’s identification, are of a kind that may emanate from a single source under a single mark, as artificial eyelashes, eyelash cosmetics, and eyelash adhesives. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

In comparing our client’s Mark and the Second Cited Mark, the marks must be compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, (Fed. Cir. 2012). See e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272, 273 (C.C.P.A. 1974) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”)

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

Our client respectfully states that we believe, at the time of the Examination, there was a mistake in failing to give due weight to the differences between our client’s Mark and the Second Cited Mark. “Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight." In re Hearst, 982 F.2d 493, 494 (Fed.Cir. 1992). In Hearst, the Applicant sought to register VARGA GIRL for calendars. The Trademark Trial and Appeal Board refused registration in light of the prior registration VARGAS, registered for posters, calendars, greeting cards and related goods. On Appeal, the Federal Circuit reversed the Board's refusal.

The additional term LASHES in the registered mark is a generic term for the registrant’s goods and goods featured by the registrant’s services, and has been disclaimed. This term does not change the connotation of the dominant term TATTI in that mark.

The appearance, sound, sight, and commercial impression of “TATTI LASHES” derive significant contribution from the component “LASHES”. Moreover, this registration covers very specific goods and services all related to “eyelashes” in Classes 3 and 35. Clearly, the owner of this mark wanted to limit the mark only to “eyelashes” otherwise, it would have sought registration for “TATTI” alone without the descriptor “LASHES” and would not have limited the goods/services to those relating to “eyelashes” only. We are of the opinion that by stressing the portion "TATTI" and diminishing the portion “LASHES”, there is an inappropriate shift in the overall impression of the mark.

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).

Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that §2(d) of the Lanham Act seeks to prevent.").; In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

Our client respectfully states that the each mark is easily recognizable and consumers would not think that they come from the same source. Because “TATTI LASHES” is limited to eyelash goods and services while our client’s mark is a full line of cosmetics, make up, skin care and fragrances which is associated with a very well-known and famous entertainment star – Tati Westbrook. We are of the opinion that when our client’s Mark and the Second Cited Mark are compared in their entireties, the two marks create two distinct connotations, commercial impressions, and visual impressions that result in there being no likelihood of confusion.

The applicant’s mark does not include the term Westbrook. However, assuming, arguendo, that consumers would associate the applicant’s mark with Tati Westbrook, there is nothing to prevent a similar association between Ms. Westbrook and the other marks. The Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods and/or services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).

2.    Requirement for Acceptable Identification and Classification of Goods (and Compliance with Multiple-Class Application Requirements, if applicable).

Our client agrees to amend the description of goods as you have proposed, namely:

“Cosmetics and make-up; Non-medicated skin care preparations; Hair care preparations; Non-medicated toiletry preparations and perfumery; Non-medicated Soaps; Non-medicated bath preparations; Body wash; Lipstick; Lip gloss; Lip stains; Lip liners; Mascara; Eye shadow; Eye liner; Blush; Makeup, namely, Highlighter; Foundations; Concealers for skin; Make-up powders; Make-up Primer; Facial concealer; Make-up pencils; Eye make-up; Skin Bronzer; Make-up setting spray; Make-up remover; Make-up remover pads; Premoistened towelettes impregnated with make-up remover; Cosmetic creams and lotions; Face makeup and pressed powder cosmetic masks; Cosmetic pads; Make-up kits comprised of skin moisturizer, primer, facial concealer, lipstick, lip gloss, lip stains, lip liners, mascara, eye shadow, eye liner, blush, highlighter, foundations, concealers for skin, make-up powders, make-up pencils, eye make-up, skin bronzer, make-up setting spray, make-up remover, cosmetic creams and lotions; Cosmetic creams for skin care; Cosmetic preparations for skin care; Non-medicated skin care creams and lotions; Skin cleansers; Skin moisturizers; Skin toners; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleansers and peels; Cosmetic soaps; Cosmetic facial blotting papers; Lotions for cosmetic purposes; Cosmetic cleansing creams; Pre-moistened cosmetic towelettes; Cosmetic skin fresheners; Cosmetic nourishing creams; Cosmetic preparations for eyelashes; Facial creams; Cotton puffs for cosmetic purposes; Cosmetic body scrubs being non-medicated skin care preparations; Non-medicated skin care products, namely, serums, lotions, creams, moisturizers, gels, toners, cleansers, peels, masks, body balm, body polish, aerosols; Cosmetic body care preparations; Perfume and fragrances; Non-medicated skin care preparations, namely, body mist; Body fragrances; Non-medicated anti-wrinkle skin care preparations; Facial gels, namely, non-medicated skin care preparations; Anti-wrinkle non-medicated skin serums; Moisturizing skin lotions; Non-medicated skin care creams; Non-medicated firming skin cream; Non-medicated serums for use on the skin; Topical skin care preparation, namely, non-medicated preparation for the removal of fine lines and wrinkles and skin surface irregularities; Body washes, creams and lotions, in Class 3.”

Our client will not file additional multi-classes for the following goods:

1.    Medicated Soaps; Topical skin care preparation, namely, non-medicated therapeutic preparation for the treatment of fine lines and wrinkles and skin surface irregularities, in Class 5.

2.    Highlighter pens and markers, in Class 16.

3.    Non-medicated toiletry sponges; premoistened towelettes for removing make-up, not impregnated with a cleaning agent, in Class 21.

We suggest scheduling a telephone call to discuss the above at your earliest convenience. We look forward to hearing back from you soon. Thank you.

Yours truly,

Sunny S. Nassim, Esq.

1880 Century Park East, Suite 900

Los Angeles, CA 90067

Tel: 310.446.9900 Ext. “230”

Fax: 310.446.9909

sunny@jrsnd.com

www.jrsnd.com

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