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:  March 31, 2020

 

 

INTRODUCTION

 

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 searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

SUMMARY OF ISSUES:

• Amended Identification of Goods Requirement – Classes 003, 005, and 021
• Multiple-Class Application Requirements Advisory
• Disclaimer Statement Requirement

 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED – CLASSES 003, 005, AND 021

 

Applicant must clarify the wording in the identification of goods in International Classes 003 and 005 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the goods is unclear.  Specifically, particular wording in each class could identify goods in the other international class.  For example, non-medical cosmetic goods are in International Class 003, while medical treatments and preparations are in International Class 005.

 

Applicant must also clarify the wording in the identification of goods in International Class 021 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The nature of the goods is unclear, and the wording class could identify goods in more than one international class.  For example, medical devices for skin treatment are in International Class 010, while personal grooming apparatus are in International Class 021.

 

Lastly, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods in Classes 003 and 005.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a). 

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 003:

 

“Facial sheet mask; Facial beauty mask; Facial wash-off mask; Facial overnight mask; Non-medicated facial serum; Facial oil; Non-medicated facial balm; Exfoliating cream; Exfoliating pad containing a glycolic ingredient not for medical purposes; Non-medicated exfoliating preparations for skin; Skin toners; Facial cream; Cosmetic patches for skin care; Non-medicated scar-reducing skin patches; Facial cleansers; Non-medicated preparations in the nature of facial exfoliators; Toning lotion for the face; Moisturizing cream; Non-medicated preparations in the nature of facial cream and gel with SPF; Beauty serums; Non-medicated skin serums; Acne patch with salicylic acid not for medical purposes; Liquid acne patch with salicylic acid not for medical purposes; Non-medicated skin care preparations”

 

 

International Class 005:

 

“Medicated skincare products, namely, adhesive skin patches for acne treatment; Hydrocolloid medical dressings; Hydrocolloid medical patches; Adhesive bandages; Medicated skin care preparations”

 

 

International Class 010:

 

            “Skin treatment systems comprising ____ {indicate specific Class 010 medical devices, e.g., electronic light therapy apparatus for the skin, etc.}; Skin care device in the nature of ____ {indicate specific Class 010 medical device, e.g., cosmetic apparatus using ultrasound for performing aesthetic skin treatment procedures, etc.}”

 

 

International Class 021:

 

“Skin treatment systems comprising ____ {indicate specific Class 021 personal grooming utensils, e.g., applicator wands for applying make-up to skin, etc.}; Skin care device in the nature of ____ {indicate specific Class 021 personal grooming utensil, e.g., hand-operated brush used to clean, smooth, and exfoliate skin, etc.}”

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See 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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods and services 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 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least five classes; however, applicant submitted fees sufficient for only four classes.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

DISCLAIMER STATEMENT REQUIRED

 

Applicant must disclaim the wording “FOR BLEMISHES” because it is merely descriptive of a feature or characteristic of applicant’s goods and 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 attached evidence from Charlotte CBD, Marie Claire, and Sephora shows this wording is commonly used in connection with similar goods and services to indicate skincare products.  Thus, the wording merely describes the feature or characteristic of applicant’s goods and services whereby the identified goods and services relate to skincare.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FOR BLEMISHES” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

ASSISTANCE

 

Please email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 March 31, 2020 for

U.S. Trademark Application Serial No. 88763436

 

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. 

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 March 31, 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.”