United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

NON-FINAL 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:  September 17, 2021

 

NO CONFLICTING MARKS FOUND

Based on examination of this application, the USPTO database of registered and pending marks has been searched and no conflicting registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).  Trademark Manual of Examining Procedure §§ 704.02, 705.01 (July 2021). 

SUMMARY OF OUTSTANDING ISSUES

This correspondence details the following reasons for refusing advancement of this application:

1.         Registration is refused as to International Class 3, because the specimen container is illegible and therefore, actual use of the proposed mark cannot be accessed; and

2.         Applicant is required to amend the description of certain goods, and pay any additional fees to reclassify goods, if appropriate.

SUBSTANTIVE REFUSAL

SPECIMEN REFUSAL AS TO CLASS 3

Applicant filed this application on February 22, 2021, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on its use of the mark “ESKER” to indicate the source of, as initially listed, “moisturizer and body wash” and “jade roller for use in skin care and for massage purposes.”  Applicant has demonstrated good use of the mark as to International Class 10.

Specimen illegible as to Class 3.  Registration is refused, pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, as to International Class 3, because significant details of the specimen submission are illegible, and therefore, the submission does not show the applied-for mark as actually used in commerce.  37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a); TMEP §§ 904, 904.07(a).  Under Sections 1(a) and 45 of the Trademark Act and Rule 2.56, a specimen showing such use is required in an application based on use of the mark in commerce.  15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a).

Specimens are required because they show the manner in which the mark is seen by the public.  Specimens also provide supporting evidence of facts recited in the application.  TMEP § 904. 

Here, Applicant has submitted two PDF images as specimens, with the first being described as a “product with label” and the second being described as a “product with packaging.”  The specimen submitted to support International Class 3 shows the mark on a label on a container, but all of the printed matter on the label other than the proposed is too blurry and otherwise illegible to read.  The other specimen submission shows a massage apparatus with the mark on the packaging.

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, and this information may be provided on the specimen itself, on the TEAS form in the description of the specimen submission, 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).

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1)        Submit a true copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.

(2)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. § 2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

(3)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

PROCEDURAL REQUIREMENT

AMEND INDICATED GOODS

Applicant is advised that the identified “moisturizer” and “jade roller for use in skin care and for massage purposes” are unacceptable as indefinite, vague and possibly overly broad.  TMEP §§ 1402.01, 1402.03(a); see 37 C.F.R. § 2.32(a)(6).  Applicant must amend these goods by providing greater specificity as to the nature and use of the goods to ensure proper understanding and classification. 

With respect to the identified “moisturizer,” Applicant must amend this portion of the entry to specify the area of use, as it is indefinite and vague.  37 C.F.R. § 2.32(a)(6); TMEP §§ 1401.02, 1402.01.  Generally, non-medicated skin care preparations are in International Class 3, and the area of use is required as part of the description of goods, because some non-medicated moisturizers are in International Class 5.  For example, skin moisturizers are in International Class 3, but vaginal moisturizers are in International Class 5. 

With respect to the identified “jade roller for use in skin care and for massage purposes,” Applicant must amend this listing, as it is unclear.  Jade rollers are typically used as a massage apparatus to firm the appearance of skin.  All massage apparatuses are in International Class 10.  Cosmetic utensils, however, are in International Class 21, such as a microdermabrasion sponges for cosmetic use.  Clarification, therefore, is required.  

As the above examples demonstrate, these entries originally listed in International Classes 3 and 10 maybe overly broad.  Depending on the amended listing or listings, the amended goods or services may be in more than the classes currently designated.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing number, Applicant must amend the application by classifying the goods or services in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit goods or services to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of goods are suggestions only.  Reclassified and relocated wording is in bold lettering.  New wording is capitalized and bold. 

Applicant may adopt the following framework to amend and classify the goods, if appropriate:

International Class 3:

SKIN moisturizer and body wash;

International Class 5 (NOT AN ACTIVE “PAID-FOR” CLASS):

VAGINAL moisturizer;

International Class 10:

Jade roller BEING A massage APPARATUS, ALSO for use in TONING AND FIRMING SKIN.

TMEP §§ 1402.01, 1402.03.  Please note that while the identification of the above-identified goods may be amended to clarify or limit the listed goods, adding goods and services or broadening the scope of the listed goods is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06-.07.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP § 1402.07(e).

For assistance with identifying and classifying the goods and services in this application, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP § 1402.04.

ADVISORIES

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies goods that may be classified in more than the class or classes originally designated.  A fee for each class is required.  37 C.F.R. § 2.86(a)(2), (b)(2); TMEP §§ 810.01, 1403.01. 

multi-class section 1(a) application requirements regarding specimens & fees

The application identifies goods based on use in commerce under Section 1(a) of the Trademark Act in possibly more than two international classes.  In the initial filing, Applicant paid for two classes.  Therefore, for any additional class to this application based on use in commerce under Section 1(a), Applicant must comply with the following requirements:

(1)        Applicant must list the goods by international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 9: sunglasses; International Class 25: hats).

(2)        Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (view the USPTO’s current fee schedule).  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)        For each international class, Applicant must submit verified dates of first use of the mark anywhere and in commerce (see more information about verified dates of use);

(4)        Applicant must submit a specimen that supports use for each international class; 

            Please note that the specimens submitted in the initial filing show use of the mark for International Class 10 (see more information about specimens); and 

(5)        Applicant must 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).

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, and this information must be provided on the specimen itself, on the TEAS form in the description of the specimen submission, 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).

Please see the Multiple-class Application webpage for an overview of the requirements for a Section 1(a) multiple-class application using the Trademark Electronic Application System (TEAS) form.

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

How to respond:  Click to file a response to this non-final Office action.   Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§ 2.62(c), 2.191; TMEP §§ 304.01-.02, 709.04-.05. 

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 respond timely.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an 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 an 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 September 17, 2021 for

U.S. Trademark Application Serial No. 90539052

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 September 17, 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.”