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:  April 28, 2020

 

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.

 

Summary of Issues

 

·       Identification Of Goods Requires Amendment

·       Disclaimer Required

 

Search of Office Records

 

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.

 

Identification of Goods Requires Amendment

 

Applicant submitted the following identification of goods with the application:

           

            International Class 3

 

Soaps; body deodorants; perfumes, eau de toilette; toiletries; cosmetics; cosmetic preparations for baths; cosmetic preparations for body care; non medicated skin care preparations; sun-tanning preparations for cosmetic use, sunscreen creams, sunscreen lotions; make-up; lipstick; lip gloss; eye shadow; eye liner; mascara; eyebrow cosmetics; nail varnish; cheek blush; face foundation; face powder; make-up removing preparations; beauty masks; cotton wool for cosmetic purposes; hair curling preparations; sprays for hair styling; balms for hair styling; hair lacquers; color-removing preparations for hair; hair coloring and hair decoloring preparations; hair dye; shampoos; conditioners; hair masks; hair treatments and hair care preparations

 

The above bolded wording in the identification of goods requires amendment because it does not identify the goods with enough specificity to make clear the scope of goods offered by applicant. Further, the wording could identify goods in more than one international class and is thus overbroad.   See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Therefore, the identification of goods as submitted with the application requires the following amendments.

 

International Class 3

 

The wording “soaps,” “toiletries,” “balms for hair styling,” and “conditioners” is indefinite because it does not describe the nature of the goods with sufficient clarity. The wording could also be used to describe goods in multiple international classes and is thus overbroad. For example, “hair conditioners” are in Class 3 while “air conditioners” are in Class 11.

 

The wording “cheek blush” and “face foundation” is similarly indefinite because the nature of the goods is unclear. Applicant must use additional wording to clarify the nature of the goods (e.g., cosmetics, namely, cheek blush).

 

The wording “hair treatments and hair care preparations” is indefinite as well. Specifically, the wording “hair treatments” does not describe the goods with sufficient clarity and must be clarified.

 

Applicant may adopt the following identification of goods, if accurate:

 

            International Class 3

 

Cosmetic soaps; body deodorants; perfumes, eau de toilette; non-medicated toiletry preparations; cosmetics; cosmetic preparations for baths; cosmetic preparations for body care; non medicated skin care preparations; sun-tanning preparations for cosmetic use, sunscreen creams, sunscreen lotions; make-up; lipstick; lip gloss; eye shadow; eye liner; mascara; eyebrow cosmetics; nail varnish; cosmetics, namely, cheek blush; cosmetics, namely, face foundation; face powder; make-up removing preparations; beauty masks; cotton wool for cosmetic purposes; hair curling preparations; sprays for hair styling; non-medicated balms for hair styling; hair lacquers; color-removing preparations for hair; hair coloring and hair decoloring preparations; hair dye; shampoos; hair conditioners; hair masks; non-medicated hair treatments and hair care preparations all for the care of skin, hair and scalp

 

International Class 5

 

Medicated soaps; medicated toiletry preparations

 

Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods 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 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.

 

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 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 Section 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 Required

 

Applicant must disclaim the wording “PARIS” because it is primarily geographically descriptive of the origin of applicant’s goods.  See 15 U.S.C. §1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from Columbiagazetteer.com shows that “PARIS” is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address.  See TMEP §1210.03.  Because the goods originate in this place or location, a public association of the goods with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

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

 

No claim is made to the exclusive right to use “PARIS” 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.

 

Comments

 

Please call or 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 refusal(s) and/or requirement(s) 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.    

 

 

/Faucette, Max/

Trademark Examining Attorney

Law Office 107

(571)270-5655

max.faucette@uspto.gov Trademark Examining Attorney

Law Office 107

(571)270-5655

max.faucette@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 April 28, 2020 for

U.S. Trademark Application Serial No. 88802001

 

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. 

 

 

/Faucette, Max/

Trademark Examining Attorney

Law Office 107

(571)270-5655

max.faucette@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 April 28, 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.”