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:  December 21, 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.

 

Identification and Classification of Goods   TMEP §1402.01.

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a). 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods within an international class.

 

 

 

Applicant has submitted the following identification of goods for International Class 001:

Ingredients for hand-sanitizing liquids, ingredients for hand sanitizing sprays, ingredients for hand sanitizers, chemical products for industrial use for the manufacture of beauty, eye care, hair care and skin care products, chemical and biochemical preparations for use in cosmetics, eye care products, hair care products, skin care products and sun-screen products for the absorption of ultraviolet ray.

 

The identification references ingredients for and preparations for finished product rather than the finished product itself.  See TMEP §1402.05(a).  The application must accurately identify the specific goods with which applicant is using or intends to use the mark; thus, applicant must clarify the goods because of this inconsistency in the record.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.05(a). 

 

Applicant must amend the identification to “(1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part.”  TMEP §1402.05(a).  The proper international class for such component or ingredient is the international class of the finished product.  Id.

 

The identification references various products.  applicant must amend this wording to specify either (1) the common generic name of each product or (2) the nature, purpose, and/or intended use of each product.  See TMEP §§1402.01, 1402.03. 

 

The use of semi-colons will assist in defining what language is meant to modify what other language.   Applicant must rewrite the identification submission above.

For example, if accurate, the applicant may amend this wording to:

 

chemical ingredients used in the manufacture of hand-sanitizing sprays and hand-sanitizing preparations;

chemical ingredients for industrial use for the manufacture of beauty, eye care, hair care and skin care products, namely, cosmetics, hair care preparations, non-medicated skin care preparations;

chemical and biochemical preparations for use in the manufacture of cosmetics, non-medicated and medicated eye care preparations, non-medicated and medicated hair care preparations, non-medicated and medicated skin care preparations and sun-screen preparations for the absorption of ultraviolet ray, in International Class 001.

 

 

Applicant has submitted the following identification of goods for International Class 003:

Cosmetics, also for beauty, eye care, hair care and skin care; cosmetics, hair care, eye care and skin care products for the prevention of sunburn;  sun-tan and sun-screening preparations;   preparations and substances for the conditioning, care and appearance of the skin, body, eye, face and hair, cosmetic preparations, cosmetics, namely, powders, sprays for deodorizing and refreshing, towelettes for deodorizing and cleansing and liquids for washing and cleansing, all for use in feminine hygiene, feminine hygiene wash, deodorants and antiperspirants (toiletry preparations);   

soaps, disinfectants and deodorant soaps, soaps for toilet purposes, body wash, hand wash, shower foams, shower creams, shower soaps, cleansing cream for toilet purposes and skin use, cleansing soaps for toilet purposes and skin use, bath gels and shower gels not for medical purposes, cosmetic preparations for cleaning and care of skin and hair, bath preparations and shower bath preparations, douching preparations for personal sanitary or deodorant purposes (toiletries); personal lotions for private parts, not for medical purposes; vaginal preparations for personal sanitary or deodorant purposes; hand-washing paste; anti-bacterial body wash, anti-bacterial hand wash, anti-bacterial foam hand wash; feminine hygiene wash (not medical), non-medicated preparations and substances for the conditioning, care and appearance of the skin, body, face and hair; cleansing milk for toilet purposes, creams, milks and lotions for cosmetic purposes, cosmetic preparations for skin care, cosmetic preparations for baths, shampoos and hair lotions.

 

With regard to the phrase “Cosmetics, also for beauty, eye care, hair care and skin care” in the identification of goods is unacceptable as indefinite. 

For example, if accurate, the applicant may amend this wording to:

 

Cosmetics for eye care, hair care and skin, is not acceptable.  Clarification is required.

For example:

• Cosmetics for beauty;
• Eye gels; cosmetic preparations for hair care; cosmetic preparations for skin care;

 

The wording “hair care, eye care and skin care products for the prevention of sunburn” in the identification of goods is unacceptable as indefinite. Is “for the prevention of sunburn” meant to modify “hair care, eye care and skin care products” ?  or only “skin care”?  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• Hair care preparations, namely, _______________  [specify common commercial name(s) e.g., shampoo]
• care preparations, namely, _______________   [specify common commercial name(s) e.g., non-medicated eye wash]
• Cosmetic preparations against sunburn, is in International Class 003;

 

The wording “sun-tan and sun-screening preparations” in the identification of goods is unacceptable as indefinite.  And could refer to goods in more than one International Class.  Clarification is required.   For example, if accurate, the applicant may amend this wording to:

• Cosmetic suntan preparations and cosmetic sunscreen preparations, are in International Class 003;
• Medicated sunscreen preparations, are in International Class 005

 

The wording “preparations and substances for the conditioning, care and appearance of the skin, body, eye, face and hair, cosmetic preparations, cosmetics, namely, powders, sprays for deodorizing and refreshing, towelettes for deodorizing and cleansing and liquids for washing and cleansing, all for use in feminine hygiene, feminine hygiene wash, deodorants and antiperspirants (toiletry preparations);” in the identification of goods is unacceptable as indefinite. 

 

This entry has only one semi-colon.  The wording does not read as a single phrase.  Additionally, some of the wording is unacceptable as indefinite.  Clarification is required.

Specifically, the wording “preparations and substances for the conditioning, care and appearance of the skin, body, eye, face and hair,” in the identification of goods is unacceptable as indefinite.   Applicant must provide the common commercial name(s) for the individual goods.

This re-write should end with a semi-colon.

 

A semi-colon should follow “cosmetic preparations”

 

The wording “cosmetics, namely, powders, sprays for deodorizing and refreshing,” in the identification of goods is unacceptable as indefinite.  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• cosmetics, namely, powders and sprays for personal deodorizing and refreshing;

 

The wording “towelettes for deodorizing and cleansing and liquids for washing and cleansing, all for use in feminine hygiene, feminine hygiene wash, deodorants and antiperspirants (toiletry preparations)” in the identification of goods is unacceptable as indefinite. 

For example, if accurate, the applicant may amend this wording to:

• Toiletry preparations, namely, feminine hygiene cleansing and deodorizing towelettes;
• Toiletry preparations, namely, feminine hygiene washing and cleansing liquids;
• Toiletry preparations, namely, feminine hygiene deodorants and antiperspirants;

 

The wording “soaps,” in the identification of goods is unacceptable as indefinite.  Clarification is required.  For example, if accurate, the applicant may amend this wording to:

• Bath soaps;

 

The wording “disinfectants” in the phrase “disinfectants and deodorant soaps in the identification of goods is unacceptable as indefinite.  And does not identify goods in International Class 003

The applicant may amend this wording to:

• Disinfectant soap; is in International Class 005.

Deodorant soaps are properly identified and classified in International Class 003.

 

The wording “soaps for toilet purposes,” in the identification of goods is unacceptable as indefinite.  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• Toilet soap;

 

The wording “hand wash” in the identification of goods is unacceptable as indefinite and could refer to goods in more than one International Class.  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• Non-medicated hand wash, in International Class 003;
• Medicated hand wash, in International Class 005;

 

The wording “bath preparations and shower bath preparations” in the identification of goods is unacceptable as indefinite.   Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• Non-medicated bath preparations and non-medicated shower bath preparations;

 

The wording “preparations” in the phrase “vaginal preparations for personal sanitary or deodorant purposes;” in the identification of goods is unacceptable as indefinite.  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• vaginal washes for personal sanitary or deodorant purposes;

 

The wording “hand-washing paste” in the identification of goods is unacceptable as indefinite.  Clarification is required.   For example, if accurate, the applicant may amend this wording to:

• Non-medicated hand-washing paste;

 

The wording “anti-bacterial body wash, anti-bacterial hand wash, anti-bacterial foam hand wash;” in the identification of goods are misclassified.  The correct classification is International Class 005. 

 

The wording “feminine hygiene wash (not medical),” in the identification of goods is unacceptable as indefinite as written.

For example, if accurate, the applicant may amend this wording to:

• Non-medicated feminine hygiene wash;

 

The wording “shampoos” in the phrase “shampoos and hair lotions” in the identification of goods is unacceptable as indefinite as written.  Clarification is required.  Additionally, a semi-color should precede “shampoos”

For example, if accurate, the applicant may amend this wording to:

• ; hair shampoos and hair lotions.

 

Applicant has submitted the following identification of goods for International Class 005:

Alcohol-based antibacterial skin sanitizer products, alcohol-based antibacterial skin sanitizer gels, alcohol-based antibacterial skin sanitizer liquids, alcohol-based antibacterial skin sanitizer foams, anti-bacterial cleaning preparations for hand and body, antibacterial skin protection lotions, creams and gels, hand disinfectants, vaginal washes for medical purposes; douching preparations for medical purposes; bath preparations for medical purposes; antibacterial hand wash; antibacterial bar soap; anti-bacterial body wash; anti-bacterial foam hand wash, feminine hygiene wash, hand sanitizing preparations; hand sanitizer

 

The wording “products” in the phrase “Alcohol-based antibacterial skin sanitizer products” identification of goods is unacceptable as indefinite.   Clarification is required. 

For example, if accurate, the applicant may amend this wording to:

• Alcohol-based antibacterial skin sanitizing preparations;

 

A semi-colon should follow the phrase “antibacterial skin protection lotions, creams and gels”

 

The wording “hand disinfectants,” in the identification of goods is unacceptable as indefinite.  Clarification is required.   For example, if accurate, the applicant may amend this wording to:

• hand disinfectant soap;
• hand disinfectant liquids;

 

The wording “feminine hygiene wash” in the identification of goods is unacceptable as indefinite.  Clarification is required.

For example, if accurate, the applicant may amend this wording to:

• Medicated feminine hygiene wash;

 

 

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’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).

 

 

Filing Basis

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

 

SEARCH    The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Linda E Blohm/

Trademark Examining Attorney

Law Office 110

571.272.9129

linda.blohm@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 December 21, 2021 for

U.S. Trademark Application Serial No. 90750532

 

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.