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:  December 08, 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.

 

SUMMARY OF ISSUES:

• Prior Filed Application

• Identification of Goods Requirement to Avoid Deceptiveness
• Disclaimer Requirement
• Mark Description Requirement

 

PRIOR-FILED APPLICATION

 

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.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 90012561 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS REQUIREMENT TO AVOID DECEPTIVENESS

 

Applicant’s mark includes the wording “AMETHYST”, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  containing amethyst. 

 

Amethyst has always been well-known for its relaxing properties. Used in cosmetic products, its powder can help to obtain firmer connective tissue and can make the skin more resistant to environmental influences. Skin care products containing amethyst powder can very often create more beautiful, pure skin, an improved skin colour and a relaxed facial expression. See attached information from http://www.raucosmetics.de/shop/en/amethyst-powder.  Moreover, when applied to skincare, amethyst can help cleanse the skin of toxins, excess oils and daily debris such as dead skin cells. The stone also works to promote the flow of oxygen to the skin. See attached information from http://www.kristals.com/pages/amethyst.

 

This feature or characteristic is considered desirable for applicant’s goods because amethyst, is considered desirable for applicant’s goods because of the numerous health benefits it provides particularly for the skin as noted above.  However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Applicant may substitute the following wording, if accurate (suggestions in bold and deleted wording strikethrough):

 

International Class 3: Tanning creams, lotions and gels; tanning skin creams, tanning lotions and tanning gels for accelerating, enhancing, intensifying and extending tans; after tanning gels; body and facial bronzers; all the foregoing containing amethyst.

 

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).

 

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.

 

DISCLAIMER REQUIREMENT

 

Applicant must disclaim the wording “AMETHYST PREMIER COLLECTION” because it is 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 from Merriam-Webster defines “AMETHYST” as “clear purple or bluish-violet variety of crystallized quartz that is often used as a jeweler's stone.”  Furthermore, the attached evidence also shows that the wording may be used to describe or indicate the color or shade of the goods.  See http://www.merriam-webster.com/dictionary/amethyst; http://www.well-belle.com/products/amethyst-crystal-gemstone-palette; http://viseartparis.com/products/theory-highlighter-and-bronzer-01-blusher-bronzer-enamored; http://solaire.com.au/amethyst-2-hr-dark-fast-colourfuze-complex-violet-vbs-18-dha-1l/.  Thus, this wording merely describes a feature or characteristic of applicant’s goods in that the goods may contain AMETHYST for the reasons stated above or it may describe the color of the goods.

 

In addition, “self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)).  Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).

 

The attached evidence from Merriam-Webster shows that the word “COLLECT,” the verb form for the word “COLLECTION” means “to bring together into one body or place,” and that the word “PREMIER” means “first in position, rank, or importance.”  Therefore, this wording is merely laudatory of the supposed superior quality of the goods which are aggregated into a group of items available for purchase.

 

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

 

No claim is made to the exclusive right to use “AMETHYST PREMIER COLLECTION” 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. 

 

MARK DESCRIPTION REQUIREMENT

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the word "AMETHYST" in stylized lettering written vertically above a palm tree design with the right side of the trunk circling above the palm tree to the left of the words "PREMIER COLLECTION".

 

RESPONSE GUIDELINES

 

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.

 

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

 

 

/Marcya N. Betts/

/Marcya N. Betts/

Examining Attorney

Law Office 106

(571) 272-4913

Marcya.Betts@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 December 08, 2020 for

U.S. Trademark Application Serial No. 90097980

 

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. 

 

 

/Marcya N. Betts/

/Marcya N. Betts/

Examining Attorney

Law Office 106

(571) 272-4913

Marcya.Betts@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 December 08, 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.”