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. 88462562
Mark: MYCOTYROOM
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Correspondence Address:
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Applicant: Coty Beauty Germany GmbH
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Reference/Docket No. N/A
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: September 10, 2019
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGARD
TO SPECIFIED GOODS AND SERVICES
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Applicant has applied to register MYCOTYROOM in standard characters for:
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.
Similarity of the Marks
The applicant has applied for the mark MYCOTYROOM. The cited marks are COTY, COTY, COTY, and VANILLA MUSK BY COTY owned by Coty US LLC, COTY, BEAUTY CELEBRATED &LIBERATED, owned by Coty Brands Management GmbH, and IMCOTY, owned by Coty Heim.
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).
In re U.S. Registration Nos. 3917222, 5018003, and 1099176
Here, the applicant’s mark, MYCOTYROOM, is confusingly similar to the registrant’s mark, COTY. Specifically, both marks contain the same dominant term, “COTY”.
Additionally, the entirety of the registered marks, “COTY”, is present in the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Further, the term “COTY” is the dominant feature of the marks. 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). While there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)).
Here, “COTY” is the dominant term in the applied-for mark, as the structure and content of the mark places emphasis on the term “COTY”. The term “ROOM” is descriptive of the applied-for goods and services, as applicant provides chat rooms. Please see the attached dictionary definition. Additionally, the term “MY” is not distinctive because it merely modifies the dominant term, “COTY”, and therefore does not produce a separate commercial impression.
Thus, because the marks share the same dominant term, “COTY”, the marks are considered similar for likelihood of confusion purposes.
In re U.S. Registration Nos. 2136070 and 5582970
Here, the applicant’s mark, MYCOTYROOM, is confusingly similar to the registrants’ marks, COTY, BEAUTY CELEBRATED & LIBERATED and VANILLA MUSK BY COTY. Specifically, both marks contain the same dominant term, “COTY”.
First, the marks share the term “COTY”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Further, the term “COTY” is the dominant feature of the marks. 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). While there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)).
Here, “COTY” is the dominant term in the marks, as the structure and content of the marks places emphasis on the term “COTY”. In the applied-for mark, the term “ROOM” is descriptive of the applied-for goods and services, as applicant provides chat rooms. Please see the attached dictionary definition. Additionally, the term “MY” is not distinctive because it merely modifies the dominant term, “COTY”, and therefore does not produce a separate commercial impression. In the registered marks, the term “COTY” is used as a house mark, and therefore the primary source-identifying feature. In COTY, BEAUTY CELEBRATED & LIBERATED, the structure indicates that the first term, “COTY”, is the distinct house mark. Similarly, in VANILLA MUSK BY COTY, the wording “BY COTY” indicates that “COTY” is the dominant portion of the mark. Moreover, the wording “VANILLA MUSK” is disclaimed.
Thus, because the marks share the same dominant term, “COTY”, the marks are considered similar for likelihood of confusion purposes.
In re U.S. Registration No. 4992049
Here, the applicant’s mark, MYCOTYROOM, is confusingly similar to the registrant’s mark, IMCOTY. Specifically, both marks contain the same dominant term, “COTY”.
First, the marks share the term “COTY”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Further, the term “COTY” is the dominant feature of the marks. 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). While there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)).
Here, “COTY” is the dominant term in the marks, as the structure and content of the mark places emphasis on the term “COTY”. In the applied-for mark, the term “ROOM” is descriptive of the applied-for goods and services, as applicant provides chat rooms. Please see the attached dictionary definition. Additionally, the term “MY” is not distinctive because it merely modifies the dominant term, “COTY”, and therefore does not produce a separate commercial impression. Similarly, the term “IM” in the registered mark also merely modifies the dominant term, “COTY”, and therefore does not produce a separate commercial impression
Thus, because the marks share the same dominant term, “COTY”, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods and Services
The applicant’s goods and services at issue are:
In re U.S. Registration Nos. 3917222, 5018003, 1099176. 2136070 and 5582970
Applicant’s goods and services at issue are:
The registrant’s relevant goods are:
• Allure provides printed and downloadable magazines about beauty, provides and publishes mobile software applications in the field of beauty, provides online publishing services in the field of beauty, provides beauty information, provides videos in the field of beauty, provides blogs, and shares photos via the Internet, and also provides cosmetic products:
o http://www.amazon.com/Conde-Nast-Publications-Allure/dp/B001U5SPM4; http://beautybox.allure.com/; http://www.allure.com/makeup-looks; http://apps.apple.com/us/app/allure-magazine/id428600407; http://www.allure.com/topic/beauty-blogger; http://www.allure.com/video/
• Sephora provides perfume as well as beauty consultancy, information, and advice, online social networking services:
o http://www.sephora.com/product/kayali-vanilla-P439406?om_mmc=aff-linkshare-redirect-TnL5HPStwNw&c3ch=Linkshare&c3nid=TnL5HPStwNw&affid=TnL5HPStwNw-Bc5A6RifSmd6lU5iXBRKCg&ranEAID=TnL5HPStwNw&ranMID=2417&ranSiteID=TnL5HPStwNw-Bc5A6RifSmd6lU5iXBRKCg&ranLinkID=10-1&browserdefault=true; http://community.sephora.com/t5/custom/page/page-id/GroupsLandingPage?icid2=meganav_community_groups_041519_image; http://www.sephora.com/beauty/beauty-talk
• L’Oreal provides blogs and beauty consultation and advice, as well as cosmetics:
o http://www.lorealparisusa.com/beauty-magazine.aspx; http://www.lorealparisusa.com/products/skin-care/shop-all-products.aspx; http://www.lorealparisusa.com/tools-and-consultations.aspx
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 re U.S. Registration No. 4992049
The applicant’s services at issue are “Entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and related information via the Internet and other communications networks in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; production of films on all types of audiovisual or sound media in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics” in Class 41.
The registrant’s relevant services are “entertainment services in the nature of development, creation, production, distribution, and post-production of online videos” in Class 41.
The attached Internet evidence from Allure, Cosmopolitan, and Vogue establishes that the same entity commonly provides the relevant services and markets the services under the same mark, and the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example:
• Allure produces videos, pictures, images, and text in the field of beauty as well as online videos:
o http://www.allure.com/video/; http://www.allure.com/topic/beauty-blogger; http://www.allure.com/makeup-looks
• Cosmopolitan produces videos in the field of beauty as well as online videos:
o http://www.cosmopolitan.com/uk/makeup-videos/
• Vogue produces videos in the field of fashion as well as online videos:
o http://video.vogue.com/genres/Fashion
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein are of a kind that may emanate from a single source under a single mark. 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). See Registration Nos. 5344754, 5835954, and 5778730.
Thus, applicant’s and registrant’s 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).
Accordingly, because the marks are significantly similar and the goods and services are highly related, purchasers are likely to be confused as to the source of the goods and services. Thus, registration is partially refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant should note the following advisories.
ADVISORY: PARTIAL REFUSAL RESPONSE OPTIONS
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Applicant should note the following additional advisories.
ADVISORY: OWNERSHIP OF CITED REGISTRATIONS
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. {provide registration number}.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Applicant should note the following additional advisory.
ADVISORY: PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must address the following requirements.
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services in Classes 9, 16, 41, and 44 is indefinite and/or overbroad and must be clarified or reclassified to ensure proper analysis.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
In Class 16, the wording “Printed publications; printed matter, namely, magazines and publications in relation to beauty, fashion and lifestyle; books; pamphlets; manuals; magazines; periodical publications; newsletters; cards; gift tags; tissues; office requisites” in the identification of goods is indefinite and must be clarified to specify the nature of the goods, subject matter of the goods, or both, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In Class 41, the wording “production of films on all types of audiovisual or sound media in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; electronic publishing of online books, magazines and periodicals in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; providing online electronic publications (not downloadable) in the field of beauty, fashion, general interest, cultural events and entertainment related topics; online digital publishing services in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; news reporting; providing information about beauty, fashion, entertainment, current events, cultural events and activities and news; publishing online journals, namely blogs featuring personal information and opinions; organizing entertainment and cultural events; entertainment in the nature of contests, competitions and games; education; entertainment; sporting and cultural activities” in the identification of services is indefinite and must be clarified to specify the nature of the services, subject matter of the services, or both, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Additionally, the wording “publication of electronic applications for perfumery, beauty, fashion, entertainment; consultancy, information and advisory services relating to the aforesaid” is misclassified, as providing use of non-downloadable applications are in Class 42.
Further, the wording “providing information about beauty, fashion, entertainment, current events, cultural events and activities and news” is overbroad, as providing information about beauty and current events, activities, and news relating to beauty is in Class 44, and providing information about fashion and current events, activities, and news related to fashion is in Class 45.
In Class 44, the wording “Consultancy services relating to perfumery, beauty and fashion” in the identification of services is partially misclassified, as consultancy services relating to fashion are in Class 45. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following suggestions, if accurate:
009: Downloadable computer software for enabling the provision of information via the Internet; downloadable computer software for the management of information; downloadable information retrieval software; downloadable software applications for {specify function of software}; downloadable mobile application software for {specify function of software}; downloadable computer application software {specify function of software}; downloadable web application software for {specify function of software}; downloadable software applications for {specify function of software}; downloadable application software for mobile phones, namely, software for {specify function of software}; downloadable application software for social networking services via Internet; downloadable software applications for mobile devices, namely, software for {specify function of software}; downloadable computer software platforms for social networking; electronic downloadable publications in the nature of {indicate specific nature of publication} in the fields of perfumery, beauty, fashion, news, lifestyle, culture, entertainment, travel, social networking; downloadable electronic books in the field of {indicate subject matter}
016: Printed publications, namely, {indicate types of publications, e.g., brochures, booklets, teaching materials, etc.} in the field of {indicate subject
matter or field of publications}; printed matter, namely, magazines and publications {specify publications, e.g., books, hand-outs, workbooks, etc.} in relation to
beauty, fashion and lifestyle; printed books in the field of {indicate subject matter}; address books; pamphlets in the field of
{indicate subject matter}; manuals in the field of {indicate subject matter}; magazines in the field of {indicate subject matter}; printed periodical publications in the field of {indicate subject matter}; newspapers; newsletters in the field of {specify subject matter};
decals; photographs; {indicate purpose of cards, e.g., trivia cards, blank cards, occasion cards, holiday cards, etc.} cards; greeting cards; paper gift tags; calendars; diaries; postcards; posters; stationery; writing implements; paper tissues; office requisites, namely,
{specify office requisites, e.g., staples, staple removers, paper trimmers, rubber bands, etc.}
041: Entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and related information via the Internet and other communications networks in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; production of films on all types of audiovisual or sound media in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; electronic publishing of online books, magazines and periodicals in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; providing online electronic publications in the nature of {indicate nature of publications} in the field of beauty, fashion, general interest, cultural events and entertainment related topics; digital video, audio and multimedia entertainment publishing services in the field of beauty, fashion, general interest, cultural events and entertainment related topics; online digital publishing services, namely, {specify nature of services, e.g., publication of text and graphic works of others, video, audio, multimedia, etc.} in the field of perfumery, beauty, fashion, general interest, cultural events and entertainment related topics; news reporting in the field of {specify field of news}; providing information about entertainment, current events, cultural events and activities and news relating to entertainment; providing electronic library services containing images, pictures, photographs, text and other multimedia content via an online computer network and other electronic communication networks; publishing online journals, namely, blogs featuring personal information and opinions in the field of {indicate subject matter}; publishing services, namely, photo sharing via the Internet and wireless communication devices; organizing social entertainment and cultural events; entertainment services, namely, conducting contests, competitions and games in the field of {indicate subject matter}; educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops, etc.} in the field of {indicate subject matter}; entertainment services, namely, {indicate services provided, e.g., conducting parties, presenting live musical performances, displaying a series of films, etc.}; organizing, arranging, and conducting of sporting and cultural activities, namely, {specify activities}
042: Providing temporary use of non-downloadable computer software for enabling the provision of information via the Internet; providing temporary use of non-downloadable information retrieval software; providing temporary use of non-downloadable software applications for {specify function of software}; providing temporary use of non-downloadable mobile application software for {specify function of software}; providing temporary use of non-downloadable computer application software {specify function of software}; providing temporary use of non-downloadable web application software for {specify function of software}; providing temporary use of a non-downloadable application software for mobile phones, namely, software for {specify function of software}; providing temporary use of a non-downloadable application software for social networking services via Internet; providing temporary use of a non-downloadable software applications for mobile devices, namely, software for {specify function of software}; platform as a services (PAAS) featuring computer software platforms for social networking; providing temporary use of a non-downloadable web application for perfumery, beauty, fashion, entertainment; consultancy, information and advisory services relating to the aforesaid
044: Consultancy services relating to perfumery and beauty; beauty information services; beauty counselling; beauty consultation services; beauty advisory services; providing information about beauty and current events, activities, and news relating to beauty
045: Online social networking services; online social networking services by means of downloadable mobile applications; providing information about fashion and current events, activities, and news relating to fashion; consultancy services relating to fashion
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.
Applicant must address the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and services that are classified in at least six classes; however, applicant submitted a fee sufficient for only five classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class and satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least six classes; however, applicant submitted a fee(s) sufficient for only five classes. As explained, applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINES
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
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@uspto.gov v
RESPONSE GUIDANCE
