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:  November 20, 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 RECORDS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Advisory: Prior Filed Pending Applications
• Amendment to the Identification of Goods Required
• Multiple-Class Application Requirements

 

ADVISORY: PRIOR FILED PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 86838039, 88234250, and 88750595 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

However, applicant must respond to the following requirements.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED

 

Several entries in the identification of goods are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording must be clarified because it is not clear what the goods are and/or could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). 

 

Specifically, applicant must clarify the wording “non-medicated sweat creams and workout enhancing lotions” in the identification of goods in International Class 3 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 it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “non-medicated sweat creams and workout enhancing lotions in the nature of cosmetic creams and cosmetic lotions” are in International Class 3 and “non-medicated sweat creams and workout enchanting lotions in the nature of sweat enhancing body creams and lotions used to lose water weight” are in International Class 5. 

 

Likewise, applicant must clarify the wording “non-medicated lotions for post exercise muscle recovery” in the identification of goods in International Class 3 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 it does not make clear what the goods are.  Further, this wording could identify goods and/or services in more than one international class.  For example, “non-medicated lotions for post exercise muscle recovery in the nature of moisturizing solutions for the skin” are in International Class 3 and “non-medicated lotions for post exercise muscle recovery in the nature of muscle-rub preparations for the relief of pain” are in International Class 5.   

 

Additionally, the wording “clothing, namely, sauna suits and vests, shapers, shorts, and shirts” in the identification of goods is indefinite and must be clarified because the wording “sauna suits” and “shapers” fail to properly identify specific goods and could refer to a variety of different products.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Applicant may substitute the following wording, if accurate:  “clothing, namely, sauna suits being sweat suits, vests, body shapers, shorts, and shirts.”

 

Moreover, the wording “athletic apparel” in the identification of goods is indefinite and must be clarified because the word does not make clear the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01.  Applicant must amend the identification to specify the type of apparel being offered. Applicant may substitute the following wording, if accurate:  “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”

 

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

 

Class 3   -	Non-medicated sweat creams and workout enhancing lotions in the nature of cosmetic creams and cosmetic lotions; non-medicated lotions for post exercise muscle recovery in the nature of moisturizing solutions for the skin; non-medicated skin and topical lotions for cosmetic use
Class 5   -	Non-medicated sweat creams and workout enchanting lotions in the nature of sweat enhancing body creams and lotions used to lose water weight; non-medicated lotions for post exercise muscle recovery in the nature of muscle-rub preparations for the relief of pain
Class 10 -	Electric massage appliances, namely, electric vibrating massager
Class 25 -	Clothing, namely, sauna suits being sweat suits, vests, body shapers, shorts, and shirts; athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
Class 28 -	Body training apparatus, namely, electrical stimulation toner for strengthening abdominal, arm, and leg muscles

 

ADVISORY: SCOPE OF ORIGINAL IDENTIFICATION

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Applicant should note the following additional requirements.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for classes 3, 10, 25, and 28; and applicant needs a specimen for class 5.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

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.    

 

ASSISTANCE

 

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 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. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 November 20, 2020 for

U.S. Trademark Application Serial No. 90247316

 

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. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 November 20, 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.”