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: 6/21/2019

 

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods Requirement

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4523930 (KOTOSHINA), 5563218 (KOTOFEY), 5440560 (KOTOFEY), 5432900 (WOKOTO), and 5642905 (WOKOTO).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant seeks to register the mark “KOTO” for “Soaps; perfumery; essential oils; cosmetics; hair lotions; toiletries; body cleaning and beauty care preparations; skin creams; washing creams; creams (cosmetic); moisturizers; skin cleansers; skin lotions; body gels; face gels; face oils; beauty serums; skin masks; blush; body lotion; body scrub; body wash; cosmetic masks; deodorant for personal use; eyebrow pencils; eyeliner; eyeshadow; face powder; face and body glitter; facial cleansers; facial concealer; facial make-up; facial masks; foundation; foundation make-up; glitter for cosmetic purposes; hair conditioner; hair gel; hair oils; hair pomades; hair shampoo; hair spray; hand cream; eye cream; incense; lip balm; lip gloss; lip liner; lipstick; make-up; make-up remover; mascara; non- medicated balms for use on skin and lips; perfume; powder for make-up; skin bronzer; non-medicated bath salts; non- medicated skin care preparation, namely, body mist; non-medicated skin care preparations, namely, body balm; cosmetic cases sold complete with cosmetics or toiletries; eyelash care preparations; face and body glitter; eau de cologne, body sprays, fragrances for personal use; eau-de-toilette, eau-de-perfume, scented water, aftershaves” in Class 3.

 

The registered mark “KOTOSHINA” identifies “Hair shampoos; soaps; dentifrices; bath salts, not for medical purposes; hair conditioners; non-medicated skin care preparations; cosmetic preparations for body care; hair care preparations; non-medicated bath preparations; cosmetics; aromatic oils; perfumery; air fragrancing preparations; room fragrances; incenses and fragrances” in Class 3.

 

The registered marks “KOTOFEY” identify in part “General purpose cleaning abrasive liquids and powders; amber perfume; descaling preparations for household purposes; antistatic preparations for household purposes; air fragrancing preparations; cake flavorings being essential oils; flavorings for beverages being essential oils; food flavorings being essential oils; aromatics essential oils; breath freshening sprays; canned pressurized air for cleaning and dusting purposes; Non-medicated balms, other than for medical purposes, for use on hair, skin, lips; lip glosses; polishing stones; abrasive paper; emery paper; polishing paper; petroleum jelly for cosmetic purposes; shoe wax; shoe polish; cobblers' wax; cotton wool for cosmetic purposes; sachets for perfuming linen; drying agents for dishwashing machines; adhesives for cosmetic purposes; scented linen water; Javelle water for use as a bleaching preparation for household use; lavender water; toilet water; laundry wax; wax for parquet floors; floor wax; non-slipping wax for floors; depilatory wax; mustache wax; creams for leather; polish for furniture and flooring; shoemakers' wax; polishing wax; tailors' wax; massage gels, other than for medical purposes; heliotropine being essential oils; dental bleaching gels; geraniol being essential oils; make-up; deodorants for pets; deodorants for human beings or for animals; depilatory preparations; scented wood; perfumes; non-slipping polishing liquids for floors; windshield cleaning liquids; greases for cosmetic purposes; volcanic ash for cleaning; perfumery; decorative transfers for cosmetic purposes; ionone perfumery; shaving stones; astringents for cosmetic purposes; foot smoothing stones; eyebrow pencils; cosmetic pencils; silicon carbide for use as an abrasive; carbides of metal for use as abrasives; alum stones astringents; tripoli stone for polishing; adhesives for affixing false eyelashes; adhesives for affixing false hair; hair conditioners; quillaia bark for washing; corundum for use as an abrasive; beard dyes; hair colorants for toilet purposes; cosmetic hair dyes; laundry starch; laundry glaze; shoe cream; polishing creams; cosmetic creams; skin whitening creams; polishing rouge; incense; hair spray; nail polish; hair lotions; lotions for cosmetic purposes; after-shave lotions; beauty masks; oils for perfumes and scents; oils for cleaning purposes; oils for cosmetic purposes; oils for cosmetic toilet purposes; essential oils; essential oils of cedarwood; essential oils of lemon; essential oils of citron; bergamot oil; essential oils, namely, gaultheria oil; jasmine oil for personal use; lavender oil; almond oil for cosmetic use; rose oil for cosmetic use; oil of turpentine for degreasing; preparations for whitening the skin; cleaning chalk; almond milk for cosmetic purposes; cleansing milk for toilet purposes; musk perfumery; soap; deodorant soap; shaving soap; soap for brightening textile; cakes of toilet soap; antiperspirant soap; soap for foot perspiration; almond soap; mint for perfumery; cosmetic kits comprised of cosmetics; emery boards; nail art stickers; false nails; eau de Cologne; essential oils used as bases for flower perfumes; joss sticks; pastes for razor strops; dentifrices; pumice stone for personal use; lipstick cases; hydrogen peroxide for cosmetic purposes; breath freshening strips; teeth whitening strips; abrasive cloth; glass cloth being abrasive cloth; lipsticks; pomades for cosmetic purposes; shaving preparations; cosmetic preparations for baths; bath preparations, not for medical purposes; hair straightening preparations; hair waving preparations; laundry soaking preparations; grinding preparations, namely, abrasive pastes; douching preparations for personal sanitary or deodorant purposes; non-medicated toiletry preparations; smoothing preparations, namely, laundry starch; color stain removing preparations; leather bleaching preparations for household use; polishing preparations; denture polishes; mouthwashes, not for medical purposes; cosmetic preparations for slimming purposes; starch glaze for laundry purposes; furbishing preparations, namely, shining preparations being polish; eye-washes, not for medical purposes; fabric softeners for laundry use; laundry bleach; dry-cleaning preparations; paint stripping preparations; lacquer-removing preparations; make-up removing preparations; floor wax removers; scouring preparations; varnish-removing preparations; rust removing preparations; nail care preparations; cleaning preparations; preparations for cleaning dentures; wallpaper cleaning preparations; preparations for unblocking drain pipes; collagen preparations for cosmetic purposes; laundry bleaching preparations; aloe vera preparations for cosmetic purposes; sunscreen preparations; color-brightening chemicals for household laundry purposes; shining preparations polishing preparations; make-up powder; diamantine for use as an abrasive; stain removers; nail varnish removers; vaginal washes for personal sanitary or deodorant purposes; scouring solutions; false eyelashes; tissues impregnated with cosmetic lotions; tissues impregnated with make-up removing preparations; safrol being essential oil; laundry blueing; turpentine for degreasing; potpourris fragrances; bleaching soda; washing soda, for cleaning; bath salts, not for medical purposes; bleaching salts; fumigation preparations being perfumes; preservative creams for leather; ammonia volatile alkali detergent; eyebrow cosmetics; make-up preparations; sun-tanning preparations being cosmetics; hair dyes; neutralizers for permanent waving; preparations to make the leaves of plants shiny; cosmetic preparations for eyelashes; cosmetic preparations for skin care; cosmetics; cosmetics for animals; mascara; non-medicated cleansers for intimate personal hygiene purposes; detergents for household use, other than for use in manufacturing operations and for medical purposes; degreasers, other than for use in manufacturing processes; bleaching preparations for cosmetic purposes; decolorants for cosmetic purposes; toiletry preparations; antiperspirants; phytocosmetic preparations; talcum powder, for toilet use; cotton sticks for cosmetic purposes; terpenes being essential oils; emery cloth; cloths impregnated with a detergent for cleaning; henna for cosmetic purposes; cosmetic dye; shampoos; shampoos for animals; non-medicated pet grooming preparations; shampoos for pets; non-medicated animal grooming preparations; dry shampoos; sandpaper; cakes of soda lye soap; herbal extracts for cosmetic purposes; extracts of flowers for use as perfumes; ethereal essences; badian essence being essential oils; mint essence being essential oil” in Class 3.

 

The registered marks “WOKOTO” identify “Adhesives for affixing false hair; Cosmetics; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; False eyelashes; Make-up preparations; Nail polish; Make-up kits comprised of cosmetics” and “Cosmetic pencils; Decorative transfers for cosmetic purposes; Eyebrow pencils; False nails; Make-up powder; Make-up removing preparations; Nail art stickers; Nail care preparations; Polishing stones; Pumice stones for personal use; Tissues impregnated with cosmetic lotions; Varnish-removing preparations” in Class 3.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Although some of the registered marks appears in stylized form and with a design element, applicant’s mark appears in standard characters and therefore could appear in a similar manner. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In this case, the applicant’s mark, KOTO, creates a similar overall commercial impression to the cited registered marks, KOTOSHINA, KOTOFEY, and WOKOTO, because the entirety of the applicant’s mark appears in the registered mark and as such could appear to be a shortened version of these marks. Further, in the registered marks KOTOSHINA and KOTOFEY the wording appears as the initial dominant element of the marks.

 

As such, the marks are highly similar and likely to cause confusion.

 

Relatedness of the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In the case of WOKOTO with Registration No. 5432900, the registrations use broad wording to describe “Make-up preparations” , which presumably encompasses all goods of the type described, including applicant’s more narrow “blush; eyebrow pencils; eyeliner; eyeshadow; face powder; face and body glitter; facial concealer; facial make-up; facial masks; foundation; foundation make-up; glitter for cosmetic purposes; lip balm; lip gloss; lip liner; lipstick; make-up; make-up remover; mascara; non- medicated balms for use on skin and lips; perfume; powder for make-up; skin bronzer; non-medicated bath salts; cosmetic cases sold complete with cosmetics or toiletries; eyelash care preparations; face and body glitter”.  In the case of WOKOTO with Registration No. 5432900 the registrant’s wording “cosmetics” could encompass the entirety of the goods in the registrant’s mark. Additionally, “cosmetic pencils” in registrant’s mark could encompass “lip liner” in applicant’s listing of goods. 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.  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)).

 

In the case of the KOTOFEY marks, the registrations use broad wording to describe “cosmetics” , which presumably encompasses all goods of the type described, including applicant’s more narrow “Soaps; cosmetics; hair lotions; toiletries; body cleaning and beauty care preparations; skin creams; washing creams; creams (cosmetic); moisturizers; skin cleansers; skin lotions; body gels; face gels; face oils; beauty serums; skin masks; blush; body lotion; body scrub; body wash; cosmetic masks; deodorant for personal use; eyebrow pencils; eyeliner; eyeshadow; face powder; face and body glitter; facial cleansers; facial concealer; facial make-up; facial masks; foundation; foundation make-up; glitter for cosmetic purposes; hair conditioner; hair gel; hair oils; hair pomades; hair shampoo; hair spray; hand cream; eye cream; incense; lip balm; lip gloss; lip liner; lipstick; make-up; make-up remover; mascara; non- medicated balms for use on skin and lips; perfume; powder for make-up; skin bronzer; non-medicated bath salts; non- medicated skin care preparation, namely, body mist; non-medicated skin care preparations, namely, body balm; cosmetic cases sold complete with cosmetics or toiletries; eyelash care preparations; face and body glitter”. 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.  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)).

 

In the case of the KOTOSHINA, the registrations use broad wording to describe “cosmetics” , which presumably encompasses all goods of the type described, including applicant’s more narrow “Soaps; cosmetics; hair lotions; toiletries; body cleaning and beauty care preparations; skin creams; washing creams; creams (cosmetic); moisturizers; skin cleansers; skin lotions; body gels; face gels; face oils; beauty serums; skin masks; blush; body lotion; body scrub; body wash; cosmetic masks; deodorant for personal use; eyebrow pencils; eyeliner; eyeshadow; face powder; face and body glitter; facial cleansers; facial concealer; facial make-up; facial masks; foundation; foundation make-up; glitter for cosmetic purposes; hair conditioner; hair gel; hair oils; hair pomades; hair shampoo; hair spray; hand cream; eye cream; incense; lip balm; lip gloss; lip liner; lipstick; make-up; make-up remover; mascara; non- medicated balms for use on skin and lips; perfume; powder for make-up; skin bronzer; non-medicated bath salts; non- medicated skin care preparation, namely, body mist; non-medicated skin care preparations, namely, body balm; cosmetic cases sold complete with cosmetics or toiletries; eyelash care preparations; face and body glitter”. 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.  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)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

For these reasons, consumers are likely to encounter the parties’ goods in the same market channels.  Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods provided under the marks.  Accordingly, registration is refused under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF GOODS

 

Applicant must clarify some of the wording in the identification of goods because it is indefinite or overbroad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. 

 

The applicant insufficiently describes the following goods in Class 3:

• The wording “Soaps” is indefinite and overbroad because it does not specify the nature of the goods as cosmetics in Class 3 as opposed to medicated soap in Class 5.
• The wording “toiletries” is indefinite and overbroad because it does not specify the nature of the goods as non-medicated in Class 3 as opposed to medicated toiletries in Class 5.
• The wording “body cleaning and beauty care preparations” and “eyelash care preparations” is indefinite because it does not specify the nature of the goods as cosmetics in Class 3.
• The wording “washing creams” is indefinite because it does not specify the nature of the goods, such as, skin washing cream.
• The wording “creams” is indefinite because it does not specify the nature of the goods as cosmetics in Class 3.
• The wording “moisturizers” is indefinite because it does not specify the nature of the goods, such as, skin moisturizers being cosmetics.
• The wording “scented water” is indefinite because it does not specify the nature of the goods, such as, scented linen water.

 

Applicant may substitute the following wording, if accurate: 

 

Class 3: Cosmetic soaps; perfumery; essential oils; cosmetics; hair lotions; Non-medicated toiletry preparations; body cleaning and beauty care preparations being cosmetics; skin creams; skin washing creams; creams being cosmetics; skin moisturizers used as cosmetics; skin cleansers; skin lotions; body shower gels; face gels; face oils; beauty serums; skin masks; blush; body lotion; body scrub; body wash; cosmetic masks; deodorant for personal use; eyebrow pencils; eyeliner; eyeshadow; face powder; face and body glitter; facial cleansers; facial concealer; facial make-up; facial masks; foundation; foundation make-up; glitter for cosmetic purposes; hair conditioner; hair gel; hair oils; hair pomades; hair shampoo; hair spray; hand cream; eye cream; incense; lip balm; lip gloss; lip liner; lipstick; make-up; make-up remover; mascara; non- medicated balms for use on skin and lips; perfume; powder for make-up; skin bronzer; non-medicated bath salts; non- medicated skin care preparation, namely, body mist; non-medicated skin care preparations, namely, body balm; cosmetic cases sold complete with cosmetics or toiletries; eyelash care cosmetic preparations; face and body glitter; eau de cologne, body sprays, fragrances for personal use; eau-de-toilette, eau-de-perfume, scented linen water, aftershaves

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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).

 

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.

 

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.  

 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 6/21/2019 FOR U.S. APPLICATION SERIAL NO. 88381390

 

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 6/21/2019 (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.