To: | Jafer Enterprises R&D, SLU (usdocketing@scmv.com) |
Subject: | U.S. Trademark Application Serial No. 88488357 - SCENT' ELEMENT - T14998US00 |
Sent: | September 05, 2019 06:40:25 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88488357
Mark: SCENT' ELEMENT
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Correspondence Address:
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Applicant: Jafer Enterprises R&D, SLU
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Reference/Docket No. T14998US00
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 05, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search
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).
Applicant must disclaim “SCENT” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
“SCENT” is defined as a distinctive odor, especially when agreeable (See attached).[1] This merely descriptive of a feature of the identified chemical products for use in the manufacture of fragances, scented oils and other scent related goods. An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “SCENT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
The identification is acceptable in Class 3. Some of the identification of goods is indefinite and must be clarified because it is unclear from the current wording exactly what goods are used in conjunction with the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “aromatics” in Class 1 must be further clarified, e.g. “aromatic hydrocarbons.”
Applicant may adopt the following identification, if accurate (suggested wording appears italicized
print):
Industrial chemicals; chemical preparations for use in the manufacture of fragrances; aromatic hydrocarbons; functionalized silicones for use in the manufacture of personal care and cosmetic compositions; silicone fluids; unprocessed silicone resins; silicone surfactants for industrial purposes in Class 1.
-and-
Scented oils; perfuming sachets; scented wood; perfumes for industrial purposes; perfumes in solid form; perfumed powder; scented room sprays; air fragrance reed diffusers; room fragrancing preparations; air fragrancing preparations; essential oils for use in the manufacture of scented products; wicks impregnated with fragrances for fragrancing rooms; scented oils used to produce aromas when heated; reed diffusers comprised of scented oils and also including reeds and a diffuser container; perfumery, fragrances and incense, other than perfumes for personal use; aromatic essential oils in Class 3.
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Silicone rubber; insulating gloves; electrical insulators, namely, _______ (indicate specific type of insulators) insulators; raw and semi-worked rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials, namely, ________ (indicate specific goods); plastic substances, semi-processed; packing and insulating materials; acrylic resins, semi-processed in Class in Class 17. TMEP Section 1402.01.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
These issues can be resolved by telephone or by leaving a message authorizing the changes suggested.
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
If applicant has questions regarding this Office action, please call or email the assigned trademark examining attorney. 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 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.
/Jason F. Turner/
Jason F. Turner
Examining Attorney
Law Office 108
(571) 272-9353
jason.turner@uspto.gov
RESPONSE GUIDANCE
[1] scent. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/ (accessed: September 5, 2019).