United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 79292709

 

Mark:  MINDSCENT

 

 

 

 

Correspondence Address: 

GUERLAIN,

M. Daniel PONSY

125 rue Président Wilson

F-92593 LEVALLOIS-PERRET

FRANCE

 

 

Applicant:  GUERLAIN

 

 

 

Reference/Docket No. N/A

 

Correspondence Email Address: 

 

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1548004

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

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 OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

 

REQUIRED AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES

 

The identification of services contains indefinite wording. Each required amendment and suggestion is explained under the corresponding class heading below. Applicant is advised that for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

Class 9

 

The identification for software applications and mobile applications in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

In the identification of goods, “scientific apparatus and instruments” and “diagnostic apparatus not for medical use” applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The identification of goods contains parentheses and brackets.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

Applicant may adopt the following wording in Class 9, if accurate: 

 

Class 9:           Downloadable software applications for {specify the function of the software, i.e. for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; downloadable computer software applications for {specify function of the software}; downloadable applications for mobile devices for use {specify the function or use of the software}; downloadable mobile applications for portable computer devices for use in {specify the function or use of the software, i.e database management}; downloadable mobile applications for data management; downloadable mobile applications for data transmission, namely, {specify type of data, i.e. music}; downloadable mobile applications for information transmission, namely, {specify type of data, i.e. music}; downloadable mobile applications for information management; scientific apparatus and instruments, namely, {specify the common commercial name of the apparatus, i.e. ultra-high vacuum chambers}; virtual reality headsets; headsets with man-machine interface computer software; recorded software programs for use in {specify the function of the software}; 3D spectacles; diagnostic apparatus not for medical use, namely, {specify the common commercial name of the apparatus, i.e. calibration devices for calibrating X-ray}; integrated circuit cards

 

Class 38

 

The wording “telecommunications” in the identification of services is indefinite and must be clarified because the wording encompasses all class 38 services and applicant must further specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant may substitute the following wording in Class 38, if accurate:  

 

Class 38:         Telecommunications, namely, {specify the type of telecommunications services, i.e. personal communication services}; electronic transmission of photographic files, videos and digital audiovisual contents between Internet users; telecommunication services, namely, electronic transmission of images, audiovisual and video contents, photographs, videos, data, texts, messages, advertisements, advertising communications in the media and information; provision of access to computer, electronic and online databases; providing online forums for communication, namely, transmission on topics relating to the field of perfumes and cosmetics; provision of email and instant messaging services; online chatroom services for social networking; rental of photographic and/or video kiosks being telecommunications equipment for transmitting and sharing images and videos; provision of access to information from searchable indexes and databases; radio broadcasting via the Internet

 

Class 41

 

The identification of services, “Education; training; entertainment” is unacceptably broad wording from the class heading of one or more international classes that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08.  The USPTO considers class headings, whose sole purpose is to indicate the subject matter and general scope of each international class of goods and/or services, to be too broadly worded to identify goods and/or services in a U.S. application.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a). 

 

For amendments to identifications consisting of class headings, the scope of the identification is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization.  See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c). 

 

Accordingly, applicant must amend the class heading to identify specific services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s).  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).

 

The identification for “electronic publication” in International Class 41 is indefinite and too broad and must be clarified because the wording does not make clear whether this is a product or service and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether this identification refers to a publication in International Classes 9 and/or 41, and/or publishing services in International Class 41, and amend this wording to provide the additional information specified below for such goods and services.  

 

The wording “publication of electronic journals and blogs featuring user-generated contents or specific contents” in the identification of services is indefinite and must be clarified because applicant must specify the subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “publishing services, namely, electronic publishing for others” in the identification of services is indefinite and must be clarified because applicant must indicate the content being published.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “radio entertainment services on the Internet” in the identification of services is indefinite and must be clarified because the nature of the radio services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “rental of photographic and/or video kiosks [telecommunication equipment] for taking, editing and publishing images and videos” in the identification of services for International Class 41 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 “rental of telecommunications equipment” in Class 38 and “rental of photo booths for taking pictures” in Class 41.

 

Applicant may amend the class 41 heading in the identification to the following, if accurate: 

 

 

Class 41:         Education services, namely, {specify the type of services, i.e. providing classes in the field of cosmetics}; training, namely, {specify field of the training services, i.e. training in the use of cosmetics}; entertainment services, {specify the type of entertainment services, i.e. organizing social entertainment events}; providing computer, electronic and online database in the field of entertainment; publication of electronic journals and blogs featuring user-generated contents or specific contents in the field of {specify field or subject matter}; publishing services, namely, electronic publishing  of {specify what is being published, i.e. periodicals} for others; radio entertainment services on the Internet, namely, {specify the type of radio services, i.e. providing an ongoing radio program in the field of {indicate subject matter}; video production; production of training videos; rental of photographic and/or video kiosks being photo booths for taking, editing and publishing images and videos

 

Class 42

 

The wording “Provision of a Website that enables users to engage in a social network and to manage their social networking content” in the identification of services is indefinite and must be clarified because it is unclear whether the services are properly classified in Class 42 since provision of a website is classified based on subject matter and social networking services are properly classified in Class 45.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any services in the identified international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii).  Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 42 is indefinite and does not appear to describe any services in the class:  “provision of an online network service that enables users to transfer personal identity data and share personal identity data with and between several applications or Websites.”  See TMEP §1904.02(c)(iii). 

 

Applicant may respond by amending this wording to clarify the nature of the services; however, any amendment to the identification must identify services in International Class 42 and be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii).  The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends to services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those services would no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c). 

 

Alternatively, applicant may delete this unacceptable wording from the identification.  See TMEP §1904.02(c)(iii)-(iv).  However, once an application has been expressly amended to delete services, those items generally may not later be re-inserted.  See TMEP §1402.07(e).

 

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration.  TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii).  However, filing such a request with the International Bureau is not considered a formal response to this Office action.  See TMEP §1904.02(c)(iv), (e)(iii).  Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii).  The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances.  See TMEP §§716.02(g), 1904.02(c)(iii)-(iv). 

 

Class 42:         Provision of a website which features technology that enables users to engage in a social network and to manage their social networking content; provision of an online network service that enables users to transfer personal identity data and share personal identity data with and between several applications or Websites; computer services, namely, creating a virtual community enabling registered users to share, view, subscribe to and interact with images, audiovisual and video content and data and information relating thereto in the field of {indicate subject matter of content, i.e. cosmetics}; platform as a service (PAAS) featuring software platforms for social networking, for the management of social networking content, creation of a virtual community, and transmission of images, audiovisual and video contents, photographs, videos, data, texts, messages, advertisements, advertising communications in the media and information

 

Class 44

 

Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any services in the identified international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii).  Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 44 is indefinite and does not appear to describe any services in the class:  “providing a consulting service with respect to perfume via a mobile application.”  See TMEP §1904.02(c)(iii).  Consulting services are classified according to subject matter and consulting services with respect to perfume blending services is properly classified in Class 44. As noted above applicant may only amend the services to specify services within Class 44 or must delete the services. TMEP §§1402.01(c), 1904.02(c). 

 

Class 44:         Consultation relating to beauty

 

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).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

U.S. COUNSEL REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant.  37 C.F.R. §2.11(a).  Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application.  And applicant is not authorized to make amendments to the application. 

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

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.    

 

 

Melanie Singer

/Melanie Singer/

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@uspto.gov

 

 

RESPONSE GUIDANCE