To: | R & R LOTION, INC. (docketing@ngtechlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88654662 - IVY CLEANSE - 10102.3800 |
Sent: | November 06, 2019 09:14:46 PM |
Sent As: | ecom113@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. 88654662
Mark: IVY CLEANSE
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Correspondence Address: 8777 NORTH GAINEY CENTER DRIVE, STE. 175
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Applicant: R & R LOTION, INC.
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Reference/Docket No. 10102.3800
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 06, 2019
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 the Issues
1. Identification and Classification of the Goods;
2. Multiclass Advisory;
3. Disclaimer Required;
4. Requirement for Additional Information.
Identification and Classification of the Goods
The applicant has applied for the mark IVY CLEANSE for “Cleansers; Skin cleansers; Body wash; Cleanser for treating dermatological conditions” in International Class 3.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
Applicant may substitute the following wording, if accurate:
“Cleansers, namely, skin cleansers; Body wash for humans” in International Class 3.
“Medicated skin cleanser for treating dermatological conditions; medicated facial cleansers” in International Class 5.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); 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). Furthermore, the identification of goods and services must be specific and definite. 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).
The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules. When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. However, it is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d).
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.
Multiclass 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 and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
Disclaimer Required
In this case, applicant must disclaim the word CLEANSE because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. 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 applicant has applied for the mark IVY CLEANSE for “Cleansers; Skin cleansers; Body wash; Cleanser for treating dermatological conditions.” The term CLEANSE is defined as “to make something completely clean.” (See attached definition). When used in conjunction with the goods, the applicant’s use of the term CLEANSE immediately describes a feature, characteristic and function of the goods (i.e., the applicant’s cleansers and body wash are used to make the body completely clean). As such, the term CLEANSE is merely descriptive, and the term must be disclaimed.
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 may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CLEANSE” 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.
Requirement for Additional Information
Further, the applicant must indicate if its goods are used to treat any type of condition that arises from exposure to poison ivy, or any such plant.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
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 is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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 the applicant has any questions, please contact the undersigned.
/Ty Murray/
Ty Murray
Attorney Advisor
United States Patent and Trademark Office
Law Office 113
(571) 272-9438
ty.murray@uspto.gov
RESPONSE GUIDANCE