To: | Paris Presents Incorporated (lmayer@parispresents.com) |
Subject: | U.S. Trademark Application Serial No. 88480128 - MIRACLE MIXING SPONGE - N/A |
Sent: | September 19, 2019 03:07:43 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88480128
Mark: MIRACLE MIXING SPONGE
|
|
Correspondence Address: |
|
Applicant: Paris Presents Incorporated
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 19, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 THE ISSUE:
- Disclaimer Required
DISCLAIMER REQUIRED
Applicant must provide a disclaimer of the unregistrable parts 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 MIXING SPONGE because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a function, feature, purpose, or use of applicant’s goods. 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 dictionary evidence shows that the word MIXING refers to the act of blending and the word SPONGE refers to “a piece of a soft artificial or natural substance that is used for taking liquid into itself, for cleaning things, or for washing.” See http://www.merriam-webster.com/dictionary/mixing and http://www.macmillandictionary.com/dictionary/american/sponge_1. Thus, the wording MIXING SPONGE merely describes applicant’s goods because it immediately conveys to consumers that applicant provides products in the nature of a piece of a soft artificial or natural substance that is used for blending makeup; accordingly, it must be disclaimed from the mark.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MIXING SPONGE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
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
/Xheneta Ademi/
Xheneta Ademi
Examining Attorney
Law Office 122
571-272-7151
xheneta.ademi@uspto.gov
RESPONSE GUIDANCE