Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 15, 2022

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 30, 2022.

 

In a previous Office action dated July 31, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

• IDENTIFICATION OF GOODS

 

After careful consideration of applicant’s evidence and arguments, the trademark examining attorney maintains and now makes FINAL requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:

 

• IDENTIFICATION OF GOODS

 

 

IDENTIFICATION OF GOODS

 

Applicant must clarify the below listed wording in the identification of goods because the respective identifications are indefinite and/or too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

International Class 10:

 

The wording “microneedling devices” is indefinite and must be clarified because the nature of the goods is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In the communication dated January 30, 2022, applicant argued against the identification required and provided screenshots of dictionary and FDA webpages as evidence that “microneedling devices” is sufficiently definite to identify its goods amongst consumers. However, applicant’s arguments are not persuasive where the evidence attached herein and applicant’s evidence from the FDA webpage clearly demonstrate that “microneedling devices” is commonly known, understood, and interpreted as a broad term that encompasses all goods of the type, namely, pens, rollers, and/or stamps. See the attached internet evidence from:

 

• http://smoothsynergy.com/, showing that microneedling devices encompass all goods of the type, namely, pens and rollers;
• http://www.ananyaaesthetics.com/, showing that microneedling devices encompass all goods of the type, namely, pens, stamps, and rollers;
• http://www.mdneedlepen.com/, showing that microneedling devices encompass all goods of the type, namely, pens and rollers;
• http://www.fda.gov/, showing that there are several types of microneedling products;
• http://thebeautyholic.com/, showing that pens are a type of microneedling device;
• http://www.instyle.com/beauty/, showing that rollers are a type of microneedling device;
• http://www.youtube.com/, showing a comparison of microneedling pens and rollers.

 

Taken together, applicant must specify the particular goods that are broadly referenced as “microneedling devices” to comport with the Trademark Act, which requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  See 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

Further, applicant’s dictionary evidence that consists of screen shots or printouts of webpages are illegible as to the dates the webpages were downloaded or accessed and the complete URL(s).  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; see TMEP §710.01(b).  Accordingly, these webpages are objected to and will not be considered.

 

Applicant may respond to this issue by submitting an amended identification as suggested below, if accurate.

 

Suggested Amendment:

 

Applicant may substitute the following wording, if accurate (additions in bold): 

 

International Class 10             microneedling devices for the treatment of skin conditions, namely, dermal pens

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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

 

 

PROPER RESPONSE TO FINAL OFFICE ACTION

 

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 refusal(s) and/or requirement(s) 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. 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Shari Gadson/

Shari Gadson

Trademark Examining Attorney

Law Office 120

United States Patent and Trademark Office

571-272-9319

shari.gad

 

 

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 February 15, 2022 for

U.S. Trademark Application Serial No. 90615960

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.