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 26, 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.

 

SUMMARY OF ISSUES

• Requirement for clarification of identification and classification of goods; and
• Inquiry on wording in mark – appears to be foreign.

 

Search Results

 

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).  However, the applicant must respond to the following requirements: 

 

requirement for clarification of Identification and CLASSIFICATION of goods

 

The identifications of goods in Classes 004 and 005 are acceptable.

 

The wording “Aromatic body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; … lubricants for cosmetic purposes” in the identification of goods in International Class 003 is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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.

 

The wording “shampoos; Mouth washes; air fresheners” in the identification of goods for International Class 003 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, “shampoos” could encompass hair shampoo, baby shampoo – both in International Class 003, as well as medicated shampoo in International Class 005; “mouth washes” could encompass non-medicated mouth washes in International Class 003, as well as medicated mouth washes in International Class 005; “air fresheners” could encompass both air fragrances in International Class 003, as well as air deodorizing preparations in International Class 005.

 

Applicant has classified “Non-medicated acne treatment preparations” in International Class 003; however, the proper classification is International Class 005 (even though identified as “non-medicated” goods, the classification is Class 005 for these goods since 2017, as they treat a medical skin condition).  Therefore, applicant may respond by (1) reclassifying these goods in the proper international class, (2) deleting “Non-medicated acne treatment preparations” 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.  International Class 005 is already present in this application.

 

Applicant may substitute the following wording, if accurate, for the entire identification of goods (additional or alternative wording is in bold font; notes to applicant about how to clarify the identification wording are contained within brackets, but the amended identification should not include this bracketed text): 

 

“Perfumes, eau de toilette; gels, salts for the bath and the shower not for medical purpose; toilet soaps, body deodorants; cosmetics, namely, creams, milks, lotions, gels and powders for the face, the body and the hands; non-medicated sun care preparations; make-up preparations; Hair shampoos; hair care preparations; gels, sprays, mousses and non-medicated balms for hair styling and hair care; hair lacquers; essential oils for personal use; Aromatic body care preparations, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Non-medicated mouth washes; Natural essential oils; Non-medicated herbal body care products, namely, body oils, salves, and lip balms; Pet shampoo and conditioner; Pre-moistened cosmetic towelettes; Tooth paste; Tooth whitening preparations; non-medicated cosmetics; non-medicated dentifrices; lotions and lubricants being oils for cosmetic purposes; sanitary preparations being non-medicated toiletry preparations; deodorants for human beings or for animals; Fragrances; perfume oils; air fragrance,” in International Class 003;

 

“Candles; Wax melts; Candles made in whole or substantial part of natural ingredients; Aromatherapy fragrance candles; Perfumed candles; Scented candles,” in International Class 004 [no change]; and

 

“Botanical preparations for the therapy and treatment of skin disorders, eye disorders, Central Nervous System disorders, stomach and intestine disorders, orthopedic disorders, autoimmune disorders, inflammatory disorders, personal lubricants, sexual stimulants gels; Nutritional and dietary supplements in the form of gel capsules and/or orally bioavailable tinctures; Dietary supplements; Powdered nutritional supplements; Plant extracts for medical, veterinary and pharmaceutical purposes; Plant extracts for pharmaceutical purposes; Plant and herb extracts sold as components of medicated cosmetics; Pre-moistened medicated towelettes; Non-medicated acne treatment preparations; air deodorizing preparations,” in International Class 005.

 

The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds , 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion , 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America , Inc ., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co ., 99 USPQ 344 (Comm'r Pats. 1953).

 

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.

 

Inquiry on wording in mark – appears to be foreign

 

To permit proper examination of the application, applicant must specify whether the wording in the mark “SOLVIVA” has any meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809, 814. 

 

If this wording has a meaning in a foreign language, applicant must provide an English translation.  37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §809.  If the wording has no meaning in a foreign language, applicant must so specify.  See 37 C.F.R. §§2.32(a)(10), 2.61(b); TMEP §809.

 

Applicant should provide an English translation and transliteration using the following format:

 

The English translation of “SOLVIVIA”is “___”. 

 

TMEP §809.03.

 

Alternatively, if the wording in the mark has no meaning in a foreign language, applicant should provide the following statements: 

 

The wording “SOLVIVA” has no meaning in a foreign language. 

 

Id.

 

EMAIL/Telephone response suggested

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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  

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 26, 2019 for

U.S. Trademark Application Serial No. 88495383

 

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. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 26, 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.”