| To: | Lyst Ltd (ip@brownrudnick.com) |
| Subject: | U.S. Trademark Application Serial No. 88570234 - LYST - 32055/43 |
| Sent: | November 12, 2019 08:29:06 AM |
| Sent As: | ecom107@uspto.gov |
| Attachments: |
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. 88570234
Mark: LYST
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Correspondence Address:
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Applicant: Lyst Ltd
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Reference/Docket No. 32055/43
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: November 12, 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 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).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “LYST” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.
(3) Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation and transliteration: “The English translation of “LYST” is “____”.
The format for when there is no English translation or meaning of the transliteration: “The wording “LYST” has no meaning in a foreign language.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
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.
IDENTIFICATION OF GOODS
Applicant may adopt the following wording, if accurate:
“Non-medicated soaps, body wash and shower gels; essential oils; non-medicated cosmetics; non-medicated hair lotions; non-medicated dentifrices and toothpaste; sun-tanning milks, gels and oils; after-sun skin care preparations; creams, milks, gels, lotions and powders for the hair, nails and skin; cosmetics; make-up preparations and make-up removers; non-medicated moisturisers for the hair, nails and skin; skin conditioning cream for cosmetic purposes; non-medicated body soaks and body rubs; sun screen; non-medicated skin care preparations for the protection of the body from the sun; non-medicated preparations for the hair, shampoo, hair conditioner, hair mousse, hair balms, styling gel; anti-perspirants and deodorants for personal use; non-medicated preparations for hairdressing and hair care; hair lacquers; hair-colouring and hair-decolourising preparations; permanent wave and curling preparations; hairsprays; non-medicated preparations for use in the bath or shower; bath and shower oils, gels, creams and foams; facial and body masks; face and body scrubs; facial washes; skin cleansers and moisturisers; skin toners; skin moisturizers; non-medicated blemish creams and gels for use in acne treatment; nail polish; lipstick; eyeliner; make-up and make-up skin care preparations; non-medicated skin care preparations for use before shaving and after shaving; shaving soaps; shaving creams; shaving gels; talcum powders; hair straightening preparations,” in International Class 003; and
“Apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers; downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer programs, recorded, for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; downloadable computer software development tools; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, managing, sharing or otherwise providing electronic media or information via computer and communication networks; data processing computers; downloadable data processing software; downloadable database management software; downloadable computer application software for use on computers, mobile phones, smartphones and other mobile devices for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; downloadable computer application software for social media and social networking; downloadable computer application software for allowing data collection, data retrieval, data manipulation and sharing of data with others electronically; downloadable data synchronisation programs and downloadable application development tool programs for personal and handheld computers; downloadable computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organising text, graphics, images, and electronic publications; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable publications in electronic form in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}, supplied on-line from databases or from facilities on the Internet; downloadable software for creating indexes of information, indexes of web sites, and indexes of other information resources; downloadable software for mobile phones, smartphones and other mobile devices for detecting a user's location and displaying relevant local information of general interest; downloadable software for mobile phones, smartphones and other mobile devices that allows the user to search the phone or device's content for information, contacts, applications and sales items; downloadable software for mobile phones, smartphones and other mobile devices that allows the user to search the Internet for information of general interest; prepaid payment cards, magnetically encoded; electronic and magnetic ID cards for use in connection with payment for goods and services; encoded electronic chip loyalty cards, for {indicate use}; parts and fittings all for the aforesaid goods, namely, {please insert the common commercial names of the parts and fittings in Class 009},” in International Class 009.
“Advertising services; marketing services; promotional services; business management and information services; providing office functions; business research; market research services; consumer marketing research; dissemination of advertising for others via the Internet; the bringing together, for the benefit of others, of a variety of communications and telecommunications apparatus, instruments and software, enabling customers to conveniently view and purchase those goods, including such services provided on-line from a computer database, the Internet or other electronic network; the bringing together, for the benefit of others, of a variety of services in the field of entertainment, fashion, information services, fashion design services, lifestyle information services, life coaching services, health, beauty and fitness information, music, sports, news, current affairs reporting and information services, technology information services; on-line retail store services featuring clothing, footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear; online retail store services for the bringing together for the benefit of others, of a variety of goods, namely, clothing and footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear, enabling customers to conveniently purchase those goods from an Internet website or by means of telecommunications or by means of a global network or by mail order catalogue or from a retail store; advertising and promoting the goods and services of others via a global computer network; promoting the goods and services of others by providing a website featuring coupons, offers, rebates, reward cards, consumer reviews, links to the retail websites of others, online catalogues featuring a wide variety of consumer goods of others, comparison shopping, and discount information; commercial assistance to advertisers relating to creating, managing, and organising online advertising and online product listings; provision of advertising space through computer networks and websites; distribution of advertising material and dissemination of advertising messages; providing a searchable online advertising guide featuring the goods of third party sellers; business information services; electronic shopping retail store services featuring clothing and footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear; provision of advertising space for sellers and buyers to advertise, market and solicit goods and conclude sales transactions; commercial evaluation and rating of sellers' goods, the value and price of sellers' goods, buyers' and sellers' performance, delivery, and overall experience in connection therewith; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; auctioning; auctioneering services; assistance, namely, {please insert the common commercial names in Class 035} with purchasing goods and services, for others; searching, namely, {please insert the common commercial names in Class 035} for data in computer files, for others; demonstration of goods; distribution of samples, namely, {please insert the common commercial names in Class 035}; commercial information agency services; import and export agencies; assistance, namely, {please insert the common commercial names in Class 035} with the procurement of goods and services, for others; compilation and systemization, namely, {please insert the common commercial names in Class 035} of data into computer databases; online advertising services on the Internet and other global computer network systems; market analysis; marketing research; presentation of goods on communication media, for retail purposes; rental of publicity material; rental of advertising space; renting out of advertising time in communication media; computerised online ordering featuring general consumer merchandise; provision of business information relating to online shopping for fashion goods; promoting the goods and services of others by providing a website featuring product reviews and product information; organisation of fashion shows for commercial purposes; arranging and conducting of exhibitions for business purposes; administration of loyalty programmes involving discounts or incentives; promoting the goods and services of others by means of a loyalty rewards card scheme; Internet services, namely, on-line business directories featuring information, sites and other resources available on a global computer network for others; compilation of business directories, namely, business and commercial directories featuring {indicate subject matter, e.g., restaurants and bars}, for publication on computer databases, the Internet or other electronic networks; search engine marketing available on global computer networks for others; organising content, namely, {please insert the common commercial names in Class 035} of information provided over a global computer network according to user preference; data retrieval services, namely, {please insert the common commercial names in Class 035}; data processing services; data management services for use in debt collection, namely, electronic data collection and on-line claims management; collection of quality metric data for {indicate targeted group or profession, e.g., a network of health care providers, etc.} for business purposes; business data analysis; business strategic planning services provided to {indicate targeted group or profession, e.g., the veterinary medical profession, professional entertainers, non-profit corporations, etc.}; economic forecasting, marketing, market research, market analysis and consumer survey services; compilation of statistical information; providing trade information; dissemination of advertising for others via wireless network, telecommunication apparatus or devices or a global computer network; compilation of information into computer databases; compilation of statistics; cost price analysis; price comparison services; providing an on-line commercial information directory on the internet; compilation and systemisation of information into computer databases; electronic commerce services, namely, providing commercial information about products via telecommunication networks for advertising and sales products; publicity and sales promotion relating to goods and services, offered and ordered by telecommunications; promoting the goods and services of others by means of the issuance of loyalty rewards cards and gift cards; advice, consultancy and information services for all the aforesaid services, namely, {please insert the common commercial names in Class 035},” in International Class 035;
“Provision and arranging of payment protection {indicate the kind, e.g. health} insurance; financial management of customers' accounts; charitable fundraising services; financial services, namely, {please insert the common commercial names in Class 036}; insurance services, namely, {please insert the common commercial names in Class 036}; financial transaction processing services, namely, clearing and reconciling financial transactions via a global computer network; bill payment services; advice, consultancy and information services for all the aforesaid services, namely, {please insert the common commercial names in Class 036},” in International Class 036;
“Telecommunication services, namely, {please insert the common commercial names in Class 038}; telecommunications, namely, {please insert the common commercial names in Class 038} via multinational telecommunication networks; data transmission and reception services via telecommunication means; electronic exchange of voice, data, and graphics accessible via computer and telecommunication networks; electronic transmission of information and data; providing multiple-user access to a global computer information network; operating web-blogs, namely, {please insert the common commercial names in Class 038}; providing on-line forums for {indicate field or subject of forums}; interactive electronic bulletin boards and interactive communication services, namely, {please insert the common commercial names in Class 038}; providing online electronic bulletin boards for transmission of messages among users in the field of general interest, fashion, health and lifestyle; transmission of information, messages, text, data, multimedia content, videos and images by electronic means; providing online facilities for real-time interaction with others for hosting, sharing, organising and conducting online meetings, gatherings, forums, chatrooms, journals, blogs and interactive discussions; providing an on-line community forums for users to post, search, watch, share, critique, rate and comment on goods and services; electronic transmission of data and information; electronic transmission of e-mail; workgroup communications services, namely, {please insert the common commercial names in Class 038} over computer networks; instant messaging services; voice over ip services; communications by computer terminals; wireless broadband communication services; mobile phone communication services, namely, {please insert the common commercial names in Class 038}; providing a website that gives computer users the ability to electronically transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a searchable online evaluation database featuring {indicate specific service-related subject matter or field in Class 038} for buyers and sellers; advice, consultancy and information services for all the aforesaid services, namely, {please insert the common commercial names in Class 038},” in International Class 038;
“Providing an internet website portal featuring general entertainment,” in International Class 041;
“Computer technology consultancy in the field of {indicate specific field, e.g., aerospace engineering, geology, etc.}; hosting of digital content on the Internet; providing search engines for obtaining {specify subject matter} on a global computer network; providing search engines for obtaining fashion and lifestyle on a global computer network; computer services in the nature of providing customised web pages featuring user defined information; providing on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing on-line non-downloadable software for use in database management, creating and maintaining websites, blogs and forums; providing on-line non-downloadable software for granting and controlling access to documents and data; providing on-line computer mapping services; mapping services, namely, providing a website and website links to geographic information, map images; providing online non-downloadable software for tracking, managing, and optimising advertising and promotional campaigns, and calculating return on investment in connection with same; providing online non-downloadable software for tracking website traffic, e-commerce activity, customer loyalty, and sales conversion rates; providing online non-downloadable software for optimising website navigation; providing online non-downloadable software for managing, collecting, monitoring and analysing web, blog and other online site traffic, user preferences and links in real time; cloud hosting provider services of electronic databases; application service provider (ASP) featuring software for use in database management; platform as a service (PAAS) featuring computer software platforms for use in database management; software as a service (SAAS) services featuring software for use in database management; computer services, namely, providing database servers of variable capacity to third party computing and data storage facilities; technical support services, namely, troubleshooting of problems of computer software problems; technical support and consulting services related to all of the foregoing, namely, {please insert the common commercial names of the technical support and consulting services in Class 042}; computer software design and development for others; design and development of computer hardware and software; electronic storage of digital media namely, data, documents, text, photographs, images, music, graphics, audio, video, and multimedia content; e-mail authentication services; advice, consultancy and information services for all the aforesaid services, namely, {please insert the common commercial names of the advice, consultancy and information services in Class 042},” in International Class 042;
“Providing health information,” in International Class 044; and
“Online social networking services; providing information in the field of social networking services; online social networking services designed for people with a common desire to meet other people with similar interests; providing on-line computer databases and on-line searchable databases in the field of social networking; copyright management; providing information relating to personal online shopping for others and personal fashion consulting services; consultancy services relating to personal fashion consulting and shopping for others, provided both online and in person; providing fashion information relating the trends in fashion and lifestyles; online social networking services accessible by means of downloadable mobile applications; social introduction agencies; personal introduction services; personal concierge services for others comprising making requested {indicate type of appointments, e.g., doctor's, dentist's, hair, etc.} appointments to meet individual needs; concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in a {indicate environment, e.g., apartment complex, business conference, shopping center, etc.}; providing information, news, and commentary in the field of fashion, well-being and diverse human lifestyles; providing an internet website portal featuring fashion, lifestyles; advise, consultation and information services relating to the aforesaid services, namely, {please insert the common commercial names in Class 045},” in International Class 045.
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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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
/Steven W. Jackson/
Steven W. Jackson
Trademark Attorney
Law Office 107
steven.jackson@uspto.gov
571-272-9409
RESPONSE GUIDANCE