UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/30/2011

 

The examining attorney has received and reviewed the applicant’s Response to Office Action dated May 18, 2011.  The examining attorney has issued this Non-Final Office Action so that the applicant may respond to the following new issue(s).

 

The examining attorney inadvertently made a recommendation to the Identification of Goods that contains potentially misclassified goods.  The applicant adopted the recommended listings.  The examining attorney apologizes, but further clarification is required. 

 

The examining attorney invites the applicant to email or telephone the examining attorney if the applicant believes it may expedite the prosecution of this application.  All issues have been resolved but the following.

 

Identification of Goods and Services – Clarification Required:

 

The wording “non-medicated pacifier and teether wipes” and “medicated pacifier and teether wipes” in the International Class 03 and 05 identification of goods is too broad and must be clarified to ensure proper classification.  See TMEP §1402.01. 

 

For the Intenrational Class 05 goods, the applicant must state that the goods are “pre-moistened” to ensure the goods are encompassed by Internatiaonl Class 05.

 

As to the Internatioanl Class 03 goods, the goods can remain in International Class 03 if they are “Disposable wipes impregnated with cleansing chemicals or compounds for pacifiers and teethers.”  However, if the goods are “Non-woven disposable textile wipes not impregnated with chemicals or compounds for pacifiers and teethers” the goods are Intenrational Class 21 goods.  Please note that the applicant may adopt both listings, if appropriate.

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 03:          “NON-MEDICATED DIAPER RASH OINTMENT; NON-MEDICATED SKIN THERAPY CREAM; LIP BALM; SHAMPOO; BODY WASH; BODY LOTION; DISH DETERGENT; LAUNDRY DETERGENT; NON- MEDICATED DISPOSABLE WIPES IMPREGNATED WITH CLEANSING CHEMICALS OR COMPOUNDS FOR PACIFIERS AND TEETHERS; TOOTHPASTE; NON-MEDICATED BABY WIPES; NON-MEDICATED BABY POWDER; SKIN MOISTURIZER, NAMELY NON-MEDICATED NIPPLE LANOLIN” and

 

Class 05:          “MEDICATED DIAPER RASH OINTMENT; TEETHING GEL, NAMELY, PREPARATION FOR RELIEF OF TEETHING PAIN; MEDICATED SKIN THERAPY CREAM; HAND SANITIZER; HOUSEHOLD DEODORIZER; PRE-MOISTENED MEDICATED PACIFIER AND TEETHER WIPES; PRE-MOISTENED MEDICATED BABY WIPES; MEDICATED BABY POWDER; ANTI-MICROBIAL SURFACE SPRAY; AIR DEODORIZER; ANTI-MICROBIAL BODY LOTION; SANITIZING WIPES” and

 

Class 21:          “NON-WOVEN TEXTILE WIPES FOR CLEANING BABY BOTTLES AND BABY FEEDING EQUIPMENT; NON-WOVEN DISPOSABLE TEXTILE WIPES NOT IMPREGNATED WITH CHEMICALS OR COMPOUNDS FOR PACIFIERS AND TEETHERS”

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Partial Abandonment Advisory:

 

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application:  “non-medicated pacifier and teether wipes” and “medicated pacifier and teether wipes”.  The application will then proceed with the remaining goods.  37 C.F.R. §2.65(a).

 

Responding to This Office Action:

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.

 

/Dominic Fathy/

Trademark Examining Attorney

Law Office 104

571-272-8801 (phone)

571-273-8801 (fax)

dominic.fathy@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.