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 18, 2021

 

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:

• Prior Filed Applications
• Identification of Goods

 

Search

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

 

Prior Filed Applications

The filing date of pending U.S. Application Serial Nos. 88902090 and 90055481 precedes applicant’s filing date.  See attached referenced applications.  If the mark in either of the referenced applications registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the 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 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 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.

 

Action on this application will be suspended pending the dispositions of Application Serial No. 88902090 and 90055481, upon receipt of applicant’s response resolving the following requirements.  The applicant must respond to the requirements discussed subsequently herein within 6 months of the date of this Office Action to avoid ABANDONMENT.

 

Identification of Goods

Particular wording in the identification of goods is indefinite and must be clarified because it could include a wide variety of goods.  For example, the term “soap” is not acceptable, applicant must specify the type or use of the soap, i.e. skin soap, non-medicated soap and bath soap.  Further, applicant must clarify that the goods, such as “skin care preparations” and “lip care preparations” are non-medicates.  Additionally, applicant must indicate the nature of the “facial packs” being provided, i.e. “facial sheet masks for cosmetic use”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate.  The examining attorney’s suggestions appear in bold:

 

International Class 3

Soap namely _____ (applicant must indicate the type of soap, i.e. skin soap, non-medicated soap and bath soaps); cleaning preparations; perfumery; essential oils; deodorants and antiperspirants for personal use; hair care preparations; hair shampoos and conditioners; hair colourants; hair styling preparations; non-medicated toiletry preparations; cosmetic preparations for bath and shower; non-medicated skin care preparations; oils, creams and lotions for the skin; shaving preparations; pre-shave and aftershave preparations; cologne; depilatory preparations; sun-tanning and cosmetic sun protecting preparations; cosmetics; make-up and make-up removing preparations; petroleum jelly for cosmetic purposes; non-medicated lip care preparations; talcum powder; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; beauty masks, facial packs in the nature of ___ (applicant must indicate the goods, i.e. facial sheet masks for cosmetic use)

 

Additions Not Permitted

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).

 

ID Manual Online

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.

 

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.    

 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Examining Attorney - Law Office 110

U.S. Patent & Trademark Office

571 272-9372

Ellen.Perkins@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 18, 2021 for

U.S. Trademark Application Serial No. 90309450

 

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. 

 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Examining Attorney - Law Office 110

U.S. Patent & Trademark Office

571 272-9372

Ellen.Perkins@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 18, 2021, 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.”