To: | Unilever N.V. (dallastrademarks@bakermckenzie.com) |
Subject: | U.S. Trademark Application Serial No. 90326926 - CELL BALANCING COMPLEX - N/A |
Sent: | March 25, 2021 11:15:28 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90326926
Mark: CELL BALANCING COMPLEX
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Correspondence Address:
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Applicant: Unilever N.V.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 25, 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.
SEARCH FOR CONFLICTING MARKS
· SECTION 2(E)(1) – MERELY DESCRIPTIVE
· IDENTIFICATION OF GOODS
· MULTIPLE CLASS APPLICATION REQUIREMENTS
SECTION 2(E)(1) REFUSAL – MERELY DESCRIPTIVE
A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.” In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).
Applicant’s mark is CELL BALANCING COMPLEX for various skin care preparations. In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, Oxford English Dictionary (www.oed.com) defines “CELL” as “The fundamental, usually microscopic, structural and functional unit of all living organisms, which consists of a small quantity of protoplasm enclosed within a membrane, typically contains a nucleus or nucleoid and other organelles and internal compartments, and is capable of utilizing energy, synthesizing proteins and other biomolecules, and (usually) replicating itself”, “BALANCING” as “to bring to or keep in equilibrium” and “COMPLEX” as “A substance formed by the combination of simpler substances, esp. one in which the bonds between the substances are weaker than or of a different character from those between the constitutents of each substance”. Taken together, CELL BALANCING COMPLEX would be perceived by consumers as describing a characteristic of applicant’s goods, namely, a substance that brings equilibrium to the structural unit of one’s hair.
SUPPLEMENTAL REGISTER ADVISORY
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
IDENTIFICATION OF GOODS
The wording “serums, moisturizers, sprays” in the identification of goods is indefinite and must be clarified to indicate the body part it is for. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “ointments” must indicate it is diaper ointment to remain in Class 03. Given the limiting language “non-medicated” at the beginning of the clause, the goods cannot be moved to class 05 and listed as things such as “hemorrhoid ointment” as this is medicated and thus beyond the scope of the original identification of goods.
The wording “lip care preparations” in the identification of services for International Class 03 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass medicated lip care preparations in class 05 or non-medicated ones in class 03.
Applicant may adopt the following identification, if
accurate. Please note that any wording in bold below offers guidance and/or shows the
changes being proposed for the identification of goods and/or services. If there is wording in the applicant's version of the identification of goods and/or services which should be removed, it will
be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold.
Class 03: Cosmetics; make-up and make-up removing preparations; non-medicated lip care preparations; fragrances; non-medicated skin care creams, lotions, {indicate skin, hair, beauty, lips, etc.} serums, sunblocks, {indicate facial, skin, face, body, hand, etc.} moisturizers, {indicate “diaper” or delete} ointments and {indicate body, hair, spf sun block, foot deodorant, hair styling etc.} sprays
05: medicated lip-care preparations
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
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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.
The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $350 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Cassondra Anderson/
Examining Attorney
Law Office 103
Cassondra.Anderson@uspto.gov
(571) 272-5595
RESPONSE GUIDANCE