| To: | Deciem Beauty Group Inc. (drwtrademarks@wolfgreenfield.com) |
| Subject: | U.S. Trademark Application Serial No. 88454611 - CLINICAL FORMULATIONS WITH - D07812006300 |
| Sent: | December 05, 2019 06:57:26 PM |
| Sent As: | ecom105@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88454611
Mark: CLINICAL FORMULATIONS WITH
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Correspondence Address: WOLF, GREENFIELD & SACKS, P.C.
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Applicant: Deciem Beauty Group Inc.
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Reference/Docket No. D07812006300
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 05, 2019
A review of the merits of the application is deferred until applicant responds to the issues raised in this Office action. See TMEP §704.02.
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:
CLARIFICATION OF THREE-DIMENSIONAL MARK DESCRIPTION REQUIRED
The drawing shows a realistic depiction of an object; however it is not clear from the record whether applicant is applying for (1) a two-dimensional design mark that is not trade dress; or (2) a three-dimensional mark that is trade dress for product design (i.e., the configuration or shape of the goods themselves), product packaging (i.e., the container in which the goods are sold), or a specific design feature of the product design or packaging. Thus, applicant must clarify whether the applied-for mark is intended to be a two-dimensional design or a three-dimensional configuration mark. See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).
If applicant is applying for a two-dimensional design mark, applicant must clarify so for the record, and may amend the description accordingly. See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).
If applicant is applying for a three-dimensional configuration mark that is trade dress, applicant must amend the description to provide a clear and concise description of the mark that does the following:
(1) Indicates the mark is a three-dimensional configuration of the product design or packaging, or of a specific design feature of the product design or packaging.
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.
(3) Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
REQUEST FOR INFORMATION
(1) A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.
(2) Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.
(3) A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.
(4) A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.
(6) Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.
See 37 C.F.R. §2.61(b); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §§1202.02(a)(v) et seq.
Any document filed with the USPTO becomes part of the official public application record and will not be returned or removed. TMEP §§404, 814. If any of the information requested above is confidential or applicant does not want such information to become part of the public record for a valid reason, applicant should submit an explanation of those circumstances or redact confidential portions prior to submission. See TMEP §814. Applicants are not required to submit confidential information into the record; a written explanation or summary of that information may suffice. Id.
Regarding the requirement for this information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations as to functionality is usually more readily available to an applicant, and thus an applicant is normally the source of most of the evidence in these cases. In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); see In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding registration was properly refused where applicant failed to comply with trademark examining attorney’s request for copies of patent applications and other patent information); TMEP §1202.02(a)(v).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
MULTIPLE MARKS REFUSAL ADVISORY
When determining whether applicant seeks registration of more than one mark, the trademark examining attorney may consider the display of the mark as shown on the specimen. See In re Supreme Steel Framing Sys. Ass’n Inc., 105 USPQ2d at 1387. If the specimen displays elements of the mark on the drawing page spatially separated to such an extent that one or more of the components appear as a separate mark, then registration may be refused. See In re Supreme Steel Framing Sys. Ass’n Inc., 105 USPQ2d at 1387; TMEP §807.01.
In such cases, an applicant would generally not be permitted to amend the drawing to delete one or more of these separate elements because such an amendment would materially alter the mark as originally filed. See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. An applicant’s only option would then be to provide a verified substitute specimen showing proper use of the entire mark appearing on the drawing. See 37 C.F.R. §2.59; TMEP §904.05.
PRODUCT DESIGN MAY FAIL TO FUNCTION AS TRADEMARK FOR INCONSISTENT GOODS ADVISORY
Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark consisting of three-dimensional product packaging of a drip bottle does not function as a trademark to identify and distinguish applicant’s goods from those of others, and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.02(f)(i)-(ii). This refusal would pertain only to the following goods: “dentifrices; hair sprays, laundry wax; deodorant for personal use”. These goods appear to be, on their face, inconsistent with the product packaging depicted in the drawing.
Slight variations in appearance of a mark consisting of three-dimensional product packaging may be acceptable if all products in a product line or series have a “consistent overall look” such that (1) the product packaging conveys a single and continuing commercial impression, and (2) any changes to the product packaging do not alter its distinctive characteristics. TMEP §1202.02(f)(i)-(ii); cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quoting Rose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998), rev’d on other grounds sub nom. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (requiring a party seeking protection under Trademark Act Section 43(a) for unregistered trade dress of a series or line of products to establish a “consistent overall look” for the trade dress of those products). However, in this case, any variation in the appearance between the applied-for mark and the inconsistent goods would most likely be extreme and not considered slight.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
Mark Peisecki
/Mark Peisecki/
Trademark Examining Attorney Law Office 105
(571) 270-5399
mark.peisecki@uspto.gov
RESPONSE GUIDANCE