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:  September 10, 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.

 

Search Results

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

 

• Potential Section 2(d) Likelihood of Confusion Refusal
• Identification of Goods and Services is Indefinite - Applies to Specific Goods in Classes 03 and 08 and Specific Services in Class 35 ONLY & Amend ID to Avoid Deceptiveness Refusal – Applies to Classes 03, 04 and 35 ONLY
• Information Request & Advisory – Portion of Mark is Deceptive - Applies to Classes 03, 04 and 35 ONLY
• Disclaimer of Descriptive Wording - Applies to Classes 03, 04 and 35 ONLY

 

Potential Section 2(d) Likelihood of Confusion Refusal

 

The effective filing date of pending U.S. Application Serial No. 88040778 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No. 88040778.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Identification of Goods and Services is Indefinite - Applies to Specific Goods in Classes 03 and 08 and Specific Services in Class 35 ONLY & Amend ID to Avoid Deceptiveness Refusal – Applies to Classes 03, 04 and 35 ONLY

 

The identification of goods in International Classes 03 and 08 contains multiple indefinite entries that must be clarified because said entries lack the requisite specificity as to the common commercial name of said goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Likewise, the identification of services in International Class 35 is indefinite and must be clarified because it contains a typographical error (see explanation below).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Finally, applicant’s mark includes the wording “NATURALS”, which indicates that applicant’s goods in International Classes 03 and 04 and services in International Class 35 have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  the featured goods will be made from natural ingredients. 

 

This feature or characteristic is considered desirable for applicant’s goods and/or services because products, such as cosmetics and candles made from natural ingredients are less harmful to the environment, emit no or less toxic fumes, contain no or less chemicals and/or are healthier than non-natural counterparts of such products.  However, if some or all of the goods and/or services do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods in International Classes 03 and 04 services in International Class 35 possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification to the following, if accurate: 

 

Class 03

 

The wording “make-up removing tissues” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods and is broad enough to encompass goods properly classified in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, said wording is broad enough to encompass goods in the nature of “tissues impregnated with make-up removing preparations” in International Class 03 and/or “tissues of paper for removing make-up” in International Class 16.

 

The wording “make-up removing…sheets” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods and indicates goods properly classified in International Class 16 (e.g., “make-up removing sheets in the nature of tissues of paper”) .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant has classified “make-up removing…cloths” in International Class 03; however, the proper classification is International Class 24.  Therefore, applicant may respond by (1) adding International Class 24 to the application and reclassifying these goods in the proper international class, (2) deleting “make-up removing…cloths” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “conditioner” in the entry “baby lotion, powder, shampoo and conditioner” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “conditioner” (e.g., “baby lotion, powder, shampoo and hair conditioner”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “heat protectant” in the entry “non-medicated hair care and hair styling preparations, namely, shampoo, conditioner, hair gel, hair masks, hair mousse, hair primer and heat protectant” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 03 (e.g., “non-medicated hair care and hair styling preparations, namely, shampoo, conditioner, hair gel, hair masks, hair mousse, hair primer and heat protectant sprays”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “facemasks, footmasks, handmasks” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the commercial nature of said goods in Class 03 (e.g., “Non-medicated skin care preparations, namely, moisturizers, cleansers, facemasks, cosmetic face masks, cosmetic foot masks, cosmetic hand masks, serum, creams, lotions, balms, gels, toners, scrubs, exfoliator and peels”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 08

 

The wording “shaving tools” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 08 (e.g., “shaving tools, namely, {specify common commercial name in Class 08, e.g., electric shavers, non-electric shavers, shaving blades}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “hair styling appliances” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 08 (e.g., “hair styling appliances, namely, {specify common commercial name in Class 08, e.g., electric hair trimmers}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “hair straightening tools” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 08 (e.g., “hair straightening tools, namely, {specify common commercial name in Class 08, e.g., electric hair straightening irons}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 35

 

The wording “online retain store” in the identification of services is indefinite and must be clarified because the word “retain” appears to be a typographical error for the term “retail”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Note: The examining attorney sets forth below, the suggested changes to the identification of goods and services in bold and italicized font. In addition, the examining attorney uses strikethrough language to indicate wording that should be deleted and reclassified in a sufficiently definite recitation thereof.

 

Applicant may substitute the following wording, if accurate: 

 

“Cosmetic creams and preparations for skin care; non-medicated preparations all for the care of skin, hair and scalp; baby wipes impregnated with cleaning preparations; deodorants and antiperspirants for personal use; antiperspirant soap; body wash for humans; make-up for the face and body; make-up kits comprised of lipstick, lipgloss, eyeshadow, foundation; make-up removing tissues impregnated with make-up removing preparations, make-up removing sheets, cloths, milk, gel, lotions and creams; make-up sets; shampoo-conditioners; shaving creams; after shave lotions and creams; baby lotion, powder, shampoo and hair conditioner; cosmetics and make-up; cosmetics in the form of milks, lotions and emulsions; non-medicated hair care and hair styling preparations, namely, shampoo, conditioner, hair gel, hair masks, hair mousse, hair primer and heat protectant sprays; sun-tanning oils and lotions; sun-block creams, oils and lotions; toiletry bags sold filled with non-medicated toiletry preparations, namely, soap, shampoo, conditioner, hair gel, hair masks, hair mousse; non-medicated skin care preparations; Non-medicated skin care preparations, namely, moisturizers, cleansers, cosmetic face masks, cosmetic foot masks, cosmetic hand masks, serum, creams, lotions, balms, gels, toners, scrubs, exfoliator and peels; all of the aforementioned goods made in substantial part of natural ingredients;  in International Class 03; and/or

 

Candles and wicks for candles for lighting; perfumed and scented candles; all of the aforementioned goods made in substantial part of natural ingredients; in International Class 04; and/or

 

Razors and shaving tools, namely, {specify common commercial name in Class 08, e.g., electric shavers, non-electric shavers, shaving blades}; hair styling appliances, namely, {specify common commercial name in Class 08, e.g., electric hair trimmers}, curling iron and hair straightening tools, namely, {specify common commercial name in Class 08, e.g., electric hair straightening irons}; in International Class 08; and/or

 

Tissues of paper for removing make-up; make-up removing sheets in the nature of tissues of paper; in International Class 16; and/or

 

Make-up removing cloths; in International Class 24; and/or

 

Retail and online retail store services featuring women’s skin care, hair care and styling, beauty and grooming products; the aforementioned services featuring products made in substantial part from natural ingredients; in International Class 35; and/or

 

Beauty salon services; Hair salon services; Skin care salon services; Wig cleaning and styling services provided by hair salons and custom wig makers; in International Class 44.”

 

Scope of Goods and/or Services (Advisory)

 

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.

 

Suggested Amendment of Identification Requires Amendment of Classification

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 03, 04, 08, 16, 24, 35 & 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Requirements for a Combined Application

 

The application identifies goods and/or services in more than one international class; therefore, applicant must 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 7 classes; however, applicant submitted fees sufficient for only 5 classes.  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.

 

Information Request & Advisory - Portion of Mark is Deceptive - Applies to Classes 03, 04 and 35 ONLY

 

The nature of the goods in International Classes 03 and 04 and services in International Class 35 with which applicant intends to use or is using the mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)        A written statement explaining whether the goods and services do or will contain/consist of natural ingredients. 

 

(2)        A sample of advertisements or promotional materials featuring the goods and services and/or a photograph of the identified goods and services, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods and services.

 

(3)        A written statement describing in detail the nature, purpose, and channels of trade of the goods and services.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Applicant is advised that, if applicant’s response to the request for information indicates that the goods in International Classes 03, 04 and services in International Class 35, as identified in the application do not or will not contain/consist of natural ingredients, registration may be refused on the ground that the applied-for mark is deceptive.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-02(e).

 

Disclaimer of Descriptive Wording – Applies to Classes 03, 04 and 35 ONLY

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “NATURALS” in International Classes 03, 04 and 35 because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the online version of The American Heritage Dictionary of the English Language shows this wording is the plural form of the term “natural,” which is defined as “Present in or produced by nature”. Please see attached dictionary evidence.  Thus, the wording merely describes a characteristic of applicant’s goods in International Classes 03 and 04 and services in International Class 35, namely, that applicant’s goods and services feature products characterized as being made in substantial part from natural ingredients.

 

Please see attached third-party registrations consistently containing a disclaimer of “NATURALS” for similar goods and services. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “NATURALS” for International Classes 03, 04 and 35 apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

 

 

 

 

 

 

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  

 

 

Brian Callaghan

/Brian P. Callaghan/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 September 10, 2019 for

U.S. Trademark Application Serial No. 88477923

 

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. 

 

 

Brian Callaghan

/Brian P. Callaghan/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 September 10, 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.”