Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  August 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood Of Confusion
• Identification Of Goods For Classes 3 And 25

 

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. 5728028, 3416283, 4874424, 3579333, and 3556979.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations. U.S. Registration Nos. 5728028 and 3416283 are owned by the same entity. U.S. Registration Nos. 3579333, and 3556979 are owned by the same entity.

 

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 and/or services.  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.

 

Comparison of 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).

 

Here, the applied-for mark is BETTER LOVE, while the registered marks are JUNE JACOBS BETTER LOVE, JUNE JACOBS BETTER LOVE, AMORE MIGLIORE, MAKING LOVE BETTER, and MAKING LOVE BETTER, U.S. Registration Nos. 5728028, 3416283, 4874424, 3579333, and 3556979 respectively.

 

Regarding the applied-for marks JUNE JACOBS BETTER LOVE and JUNE JACOBS BETTER LOVE, the applied-for mark merely delates additional wording from the registered mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Regarding the registered mark AMORE MIGLIORE and the applied-for mark, BETTER LOVE, AMORE MIGLIORE translates to BETTER LOVE. Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in Italian, which is a common, modern language in the United States.  See In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (Italian).

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the Italian language is a common, modern language spoken by an appreciable number of consumers in the United States. 

 

The wording in the registered mark AMORE MIGLIORE translates to BETTER LOVE, which is identical to the applied-for mark.

 

While the registered mark has a design element, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Hence, the dominant portion of the registered mark AMORE MIGLIORE is essentially identical to the applied-for mark.

 

Regarding the registered marks MAKING LOVE BETTER, and MAKING LOVE BETTER and the applied-for mark BETTER LOVE, while the marks may appear slightly different, the marks create the same commercial impression. Consumer confusion has been held likely for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning.  Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TMEP §1207.01(b).

 

Further, the applied-for mark is in standard character and thus can be displayed in the same manner as the registered marks. 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 sum, given the highly similar appearance, meaning, connotation, and commercial impression of the registered and applied-for marks it follows that consumers will confuse the marks.

 

Comparison of Goods/Services

 

The goods and/or services 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).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

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)).  

 

Here, the applicant’s goods are the following:

 

Class 3: Body oils; body lotions; non-medicated anal creams; beauty products, namely, skin butter, shave cream, moisturizer, gloss for use on nipples, gel for use on breasts; wipes impregnated with a cleaning preparation for use on face and body; bath products, namely, bath gels, bath oils, feminine wash, velvet body wash, body wash, shampoo, conditioner; body soaps; face soaps; body gels; face gels; perfumes; body mists; body paints; body shimmer, namely, shimmer dust, pheromone misting perfume sprays, honey scented dust for use on the body, fragrance gloss for use on the body; sex toy cleaning preparations

 

Class 10: sex toys; adult stimulation aids, namely, vibrators, clitoral stimulators, dildos, kegel and pelvic health aids for sexual stimulation, love eggs, beads, anal toys, male masturbators, masturbation sleeves, C-rings, prostate massagers, men's pumps for sexual stimulation, orgasm delay aids, orgasm prolonging aids, nipple arousers, clitoral arousers, electro-stimulation aids, massagers; condoms

 

Class 25: Adult novelty gag clothing item, namely, socks, blindfolds; gags; garters; corsets; bustiers; bras; panties; stockings; leggings; babydoll pajamas; chemises; teddies; body suits; robes; dresses; provocative lingerie; masquerade costumes; clothing, namely, halters, dresses, teddies, body suits, robes, latex clothing, namely, pants, skirts, dresses, shorts, bras, tops; men's underwear; men's novelty wear, namely, shorts, underwear; active wear, namely, shorts, underwear

 

U.S. Registrant No. 5728028 goods are “Eau de toilette, eau de cologne, body spritz, body oil, fragrances for personal use, scented body lotion, shower and bath gels, bath salts, soap, bubble bath, hair shampoo and conditioner, hair spray, skin care products, namely, cleansers, facial and body scrubs, skin tonics, beauty, cosmetic, facial, body, hair and skin masks, skin peels, moisturizers, creams and moisturizing gels, hydrators, namely, skin lotions, creams and serums, sun tanning and sun care preparations, skin lighteners, skin brighteners, namely, serums, moisturizers and exfoliating powder, lotions and makeup remover, all non-medicated; essential oils for aromatherapy use and non-medicated skin lotions, creams and balms with essential oils for use in aromatherapy.”

 

U.S. Registrant No. 3416283 goods are “Eau de parfum.”

 

U.S. Registrant No. 4874424 goods are “Dresses; Hats; Jackets; Pants; Shirts; Shoes; Shorts; Skirts; Sweaters; Sweatshirts; Swimwear; Underwear.”

 

U.S. Registrant No. 3579333 and 3556979 goods are the following:

 

Class 3: Massage oils, massage creams, and skin care preparations, namely, pleasure heightening body balm

 

Class 25: Lingerie

 

In this case, the goods in the application and U.S. Registration No. 5728028 are identical in part for the goods for “body oils; shower and bath gels”.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

Further, the application use(s) broad wording to describe its Class 3 goods, which presumably encompasses all goods of the type described, including U.S. Registrantions Nos. 5728028, 3416283, 3579333 and 3556979 more narrow 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). 

 

Further, the U.S. Registrations Nos. 4874424, 3579333 and 3556979 use(s) broad wording to describe its goods, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow Class 25 goods.  Id.

 

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 and/or services 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 and/or services are related.

 

Furthermore, regarding the applicant’s Class 10 goods and the registrant’s goods, the attached Internet evidence establishes that the same entity commonly manufacture provides the relevant goods and markets the goods under the same mark:

• http://www.adameve.com, who provides perfumes, condoms, sex toys, and massage oil
• http://www.lovehoney.com/, who provides condoms, sex toys, lingerie, and perfumes
• http://kamasutra.com, who provides sex toys, massage oil, body cream, body powder, bath gel, gels for use as personal lubricant, and bath salts

Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

In total, the registered marks and the applied-for mark create the same commercial impression and the evidence shows that the goods are likely to be encountered together in the marketplace by the same consumers. Thus, consumers are likely to make the mistaken conclusion that the goods originate from the same source. Therefore, a likelihood of confusion exists and registration is refused under Trademark Act Section 2(d).

 

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

 

However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS FOR CLASSES 3 AND 25

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  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. 

 

Furthermore, the wording of the identification of the goods contain many indefinite and/or broad wording and must be clarified to further indicate the nature and purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01; See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

A summary of the problematic wording in the identification of goods is included below for applicant’s convenience.

 

Class	Problematic Wording	Reason Unacceptable	Suggestion
3	beauty products, namely, skin butter, shave cream, moisturizer, gloss for use on nipples, gel for use on breasts; bath products, namely, bath gels, bath oils, feminine wash, velvet body wash, body wash, shampoo, conditioner; body soaps; face soaps; body mists	This wording is indefinite and broad because the nature of the goods is unclear.   Further, the wording 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 medicated gel for use on breasts, medicated body soaps, medicated face soaps etc. are in Class 5 or non-medicated gel for use on breasts, non-medicated body soaps, non-medicated face soaps etc. are in Class 3.	Class 3: beauty products, namely, skin butter, shave cream, skin moisturizer, gloss for use on nipples, non-medicated gel for use on breasts; bath products, namely, bath gels, bath oils, non-medicated feminine hygiene wash, velvet body wash, body wash, shampoo, hair conditioner; non-medicated body soaps; non-medicated face soaps; Non-medicated skin care preparation, namely, body mist   Class 5: medicated gel for use on breasts; medicated feminine hygiene wash; medicated body soaps; medicated face soaps; medicated skin care preparation, namely, body mist
3	Body paints; body shimmer, namely, shimmer dust, pheromone misting perfume sprays, honey scented dust for use on the body, fragrance gloss for use on the body	This wording is indefinite because the nature of the goods is unclear.	Body paints, namely nail paints and face paints; body shimmer, namely, shimmer dust  in the nature of blushes for use on the face and body, pheromone misting perfume sprays, honey scented dust for use on the body, fragrance gloss for use on the body
25	Gags; teddies; clothing, namely, halters, dresses, teddies, body suits, robes	This wording is indefinite because the nature of the goods is unclear.	Clothing items, namely, gags worn over the mouth; teddies being underclothing; clothing, namely, halters tops, dresses, teddies being underclothing, body suits, robes,
25	corsets	This wording 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 corsets being clothing in Class 25 or corsets for therapeutic use in Class 10.	Class 10: Corsets for therapeutic use            Class 25: corsets being clothing

 

For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with any material changes highlighted in bold and underline type and any deletions strikethrough. Applicant may adopt the following identification, if accurate:

 

Class 3: Body oils; body lotions; non-medicated anal creams beauty products, namely, skin butter, shave cream, skin moisturizer, gloss for use on nipples, non-medicated gel for use on breasts;; wipes impregnated with a cleaning preparation for use on face and body; bath products, namely, bath gels, bath oils, non-medicated feminine hygiene wash, velvet body wash, body wash, shampoo, hair conditioner; non-medicated body soaps; non-medicated face soaps; body gels; face gels; perfumes; Non-medicated skin care preparation, namely, body mist; Body paints, namely nail paints and face paints; body shimmer, namely, shimmer dust  in the nature of blushes for use on the face and body, pheromone misting perfume sprays, honey scented dust for use on the body, fragrance gloss for use on the body; sex toy cleaning preparations

 

Class 5: medicated gel for use on breasts; medicated feminine hygiene wash; medicated body soaps; medicated face soaps; medicated skin care preparation, namely, body mist

 

Class 10: sex toys; adult stimulation aids, namely, vibrators, clitoral stimulators, dildos, kegel and pelvic health aids for sexual stimulation, love eggs, beads, anal toys, male masturbators, masturbation sleeves, C-rings, prostate massagers, men's pumps for sexual stimulation, orgasm delay aids, orgasm prolonging aids, nipple arousers, clitoral arousers, electro-stimulation aids, massagers; condoms; Corsets for therapeutic use

 

Class 25: Adult novelty gag clothing item, namely, socks, blindfolds; Clothing items, namely, gags worn over the mouth; garters; corsets being clothing; bustiers; bras; panties; stockings; leggings; babydoll pajamas; chemises; teddies being underclothing; body suits; robes; dresses; provocative lingerie; masquerade costumes; clothing, namely, halters tops, dresses, teddies being underclothing, body suits, robes, ; latex clothing, namely, pants, skirts, dresses, shorts, bras, tops; men's underwear; men's novelty wear, namely, shorts, underwear; active wear, namely, shorts, underwear

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Valerie Kaplan/

Trademark Examining Attorney

Law Office 107

571-272-6767

valerie.kaplan@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 23, 2019 for

U.S. Trademark Application Serial No. 88448600

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Valerie Kaplan/

Trademark Examining Attorney

Law Office 107

571-272-6767

valerie.kaplan@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”