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:  January 11, 2020

 

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 Issues:

 

• Section 2(e)(1) refusal: merely descriptive; and
• Amended identification of goods required.

 

Section 2(e)(1) Refusal: Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a function or use of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods rather than in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); TMEP §1209.01(b).  A mark is merely descriptive if it describes a function or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)). 

 

In this case, applicant seeks to register REPELLER for cosmetics including sunblock.  The purpose or function of sunblock is to repel the sun’s rays from the skin.  See, e.g., attached Merriam-Webster Dictionary definitions of sunblock and repel.  Therefore, sunblock is a repeller, and the wording REPELLER in the mark merely describes a function or use of applicant’s goods.      

 

Terms that describe the function or purpose of a product may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

 

Supplemental Register

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

An amendment to allege use must satisfy the following requirements:

 

(1)       STATEMENTS:  The following statements:  “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”

 

(2)       DATES OF FIRST USE:  The date of first use of the mark anywhereon the goods, and the date of first use of the mark in commerceas a trademark.  See more information about dates of use.

 

(3)       GOODS:  The goods specified in the application.

 

(4)       SPECIMEN:  A specimen showing how applicant uses the mark in commerce for each class of goods for which use is being asserted.  See more information about specimens.

 

(5)       FEE(S):  A filing fee for each international class of goods for which use is being asserted (find current fee information).

 

(6)       VERIFICATION:  Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20.  See more information about verification.

 

See 37 C.F.R. §2.76(b); TMEP §1104.08.

 

An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS).  Filing an amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  An applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h). 

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Applicant must respond to the following requirement.

 

Amended Identification of Goods Required

 

The classification and identification of goods in the application are:

 

Class 003:       Sunscreen preparations; Sunscreen sprays; Sunscreen creams; Waterproof sunscreen; Sunscreen sticks; Cosmetic sunscreen preparations; Cosmetic sun tan lotions, oils, and creams; Sun block lotions, oils, and creams; Sun care lotions; After sun lotions; Skincare preparations; Cosmetic preparations for skin care; Fragranced skin care preparations; Aromatherapy skin care preparations; Non-medicated skin care preparations; Cosmetic and skin care preparations, namely, lotions, creams, gels, oils, toners, cleaners, and peels

 

The wording that is italicized in the identification of goods, above, must be clarified because it is too broad and could include goods in another international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass medicated skin care preparations, which are properly classified in International Class 005. 

 

Applicant may adopt any or all of the following identification, if accurate.  Applicant must also adopt the appropriate international class number(s), and, if applicant adopts goods in more than one class, it must comply with the multiple-class application requirements set forth below.  In the following, proposed amendments are in bold.

 

Class 003:       Sunscreen preparations; Sunscreen sprays; Sunscreen creams; Waterproof sunscreen; Sunscreen sticks; Cosmetic sunscreen preparations; Cosmetic sun tan lotions, oils, and creams; Sun block lotions, oils, and creams; Sun care lotions; After sun lotions; Skincare preparations, namely, skin peels; Cosmetic preparations for skin care; Fragranced skin care preparations, namely, skin cleansers; Aromatherapy skin care preparations, namely, skin moisturizers; Non-medicated skin care preparations; Cosmetics in the nature of skin care preparations, namely, lotions, creams, gels, oils, toners, cleansers, and skin peels

 

Class 005:       Medicated skincare preparations; Fragranced pharmaceutical preparations for skin care; Medicated aromatherapy skin care preparations; Pharmaceutical skin care preparations, namely, lotions, creams, gels, oils, toners, cleansers, and skin peels

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

Multiple-Class Application Requirements

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 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 sufficient for only 1 class.  Applicant must either submit the filing fee for the class not covered by the submitted fee or restrict the application to the number of classes covered by the fee 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.

 

Response to Office Action Required to Avoid Abandonment

 

Applicant may call or email the assigned trademark examining attorney with questions about this Office action.  The trademark examining attorney cannot provide legal advice or statements about applicant’s rights, but the trademark examining attorney can provide applicant with additional explanation about the refusal and requirement in 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. 

 

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.    

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 January 11, 2020 for

U.S. Trademark Application Serial No. 88643182

 

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. 

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 January 11, 2020, 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.”