To: | Peter Thomas Roth Labs, LLC (IPDocketingTM@sheppardmullin.com) |
Subject: | U.S. Trademark Application Serial No. 88615114 - VITAL-E MICROBIOME AGE DEFENSE - 62KR-298993 |
Sent: | November 29, 2019 02:00:44 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88615114
Mark: VITAL-E MICROBIOME AGE DEFENSE
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Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200
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Applicant: Peter Thomas Roth Labs, LLC
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Reference/Docket No. 62KR-298993
Correspondence Email Address: |
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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: November 29, 2019
Introduction
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).
Portion of Mark Potentially Deceptively Misdescriptive – Information Request & Advisory
(1) A written statement explaining whether the goods do or will contain “VITAL E.”
(2) A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.
(3) A written statement describing in detail the nature, purpose, and channels of trade of the goods.
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 identified in the application do not or will not contain “VITAL E,” registration may be refused on the ground that the applied-for mark is deceptively misdescriptive. 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-16 (TTAB 1993); TMEP §§1203.02(e), 1209.04.
Disclaimer – Required
In this case, applicant must disclaim the words “AGE DEFENSE CREAM” because they are not inherently distinctive. These unregistrable terms are merely descriptive of an ingredient, quality, characteristic, 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 evidence shows that these words are commonly used in connection with similar skin care goods. Thus, these words merely describe applicant’s goods because applicant is providing skin care goods that include creams to fight or defend against age.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “AGE DEFENSE CREAM” 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.
Identification of Goods – Amendment Required
Applicant has applied for the following identification of goods:
Class 3: Non-medicated skin care preparations; medicated skin care preparations
The identification of goods is indefinite and must be clarified according to the explanations and suggestions below. See TMEP §§ 1402.01.
Applicant has classified “medicated skin care preparations” in International Class 3; however, the proper classification is International Class 5. Therefore, applicant may respond by (1) adding International Class 5 to the application and reclassifying these goods in the proper international class, (2) deleting “medicated skin care 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. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following as its identification of goods, if accurate, providing additional specificity where indicated:
Class 3: Non-medicated skin care preparations
Class 5: Medicated skin care preparations
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. If applicant adds a class to the current application, applicant must comply with the multi-class application requirements below.
For assistance with identifying and classifying goods, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application Requirements – Advisory
(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 that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Olivia S. Lee/
Olivia S. Lee
Trademark Examining Attorney
Law Office 128
olivia.lee@uspto.gov
(571) 272-6848
RESPONSE GUIDANCE