To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Smith, Jessica (jessica.standley@hotmail.com)
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`U.S. TRADEMARK APPLICATION NO. 87681223 - BLANK BEAUTY - N/A
`
`6/28/2018 10:21:01 PM
`
`ECOM117@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO.   87681223
`
`           
`
`MARK: BLANK BEAUTY
`
`CORRESPONDENT
`ADDRESS:
`  
`       SMITH, JESSICA
`  
`        5070 TENDILLA AVE
`         WOODLAND HILLS,
`CA 91364
`
`              
`    
`
`   
`APPLICANT: Smith, Jessica
`
`*87681223*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:       
`
`  N/A
`CORRESPONDENT E-
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`   
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`MAIL ADDRESS:       
`
`jessica.standley@hotmail.com
`
`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.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 6/28/2018
`
`THIS IS A FINAL ACTION.
`
`This letter responds to applicant’s communication filed on May 30, 2018.   The following requirement(s) is now made FINAL:  Disclaimer;
`Identification and Owner Name Change.  See 37 C.F.R. §2.64(a).
`
`DOMESTIC PRO SE APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL
`
`Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney
`specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining
`attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO
`
`attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.   TMEP §§705.02, 709.06.  
`
`For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help ; an online directory
`of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a
`private attorney.  37 C.F.R. §2.11.
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`SUMMARY OF ISSUES:
`
`Ownership Change – Assignment Required
`Disclaimer
`Identification
`
`OWNERSHIP – Request to Change Owner Name Denied
`
`In the January 29, 2018 preliminary response to office action, the applicant requested that the second owner name (Mariah Snell) be amended;
`however, applicant did not provide or record in the USPTO database ownership transfer documentation or any other documentation showing
`transfer of title nor did the applicant indicate whether the assignee is a successor to applicant’s business. An intent-to-use application is void if,
`prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of
`the applicant’s business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP
`§501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co. , 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank , 40 USPQ2d
`1098, 1105-06 (TTAB 1996).
`
`Accordingly, the request to amend the applicant name was denied until (1) clear chain of title to the new party has been established and (2) a
`statement that the assignee is a successor to applicant’s business was provided. 37 C.F.R. §2.61(b); TMEP §814.
`
`In its May 30, 2018 response, the applicant attempted to merely delete Mariah Snell, one of the joint owners listed in the application, from the
`record without filing the amendment through our Assignments Branch, as previously instructed.  Given that the applicant did not comply with the
`requirements for changing the ownership of the application, the refusal to amend the owner(s) of the application is maintained and MADE
`FINAL.
`
`To establish chain of title to the application, one of the following must be satisfied:
`
`(1)      
`
`(2)      
`
`The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s
`Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the
`trademark examining attorney that the documentation has been recorded.; OR
`
`The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20,
`explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However,
`the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and
`notifying the trademark examining attorney, as specified in (1) above.
`
`TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
`
`*Assignments and other documents affecting title may be filed electronically.  There is a fee for recording ownership changes.  37 C.F.R.
`§§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an
`Office action.  TMEP §503.01(d).  Applicant must still file a separate response to this Office action.  See id.
`
`DISCLAIMER
`
`Applicant must disclaim the wording “ BEAUTY” because it merely describes a function, feature, purpose, or use of applicant’s goods, and thus
`is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd. , 695
`F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP , 373 F.3d 1171, 1173, 71 USPQ2d 1370,
`1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
`
`The previously attached evidence from an online dictionary shows this wording means “the quality or aggregate of qualities in a person or thing
`that gives pleasure to the senses or pleasurably exalts the mind or spirit.” Therefore, the wording merely describes an important feature of the
`applicant’s goods, specifically, that they include cosmetic products used to enhance a person’s appearance to give pleasure to the senses.
`
`An applicant may not claim exclusive rights to terms that others may need to use to describe their goods in the marketplace. See Dena Corp. v.
`Belvedere Int’l, Inc. , 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG , 218 USPQ 823, 825 (TTAB 1983).
`A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed
`matter from the mark. See Schwarzkopf v. John H. Breck, Inc. , 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
`
`If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d
`1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005 ); TMEP §1213.01(b).
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`Applicant should submit a disclaimer in the following standardized format:
`
`No claim is made to the exclusive right to use “BEAUTY” apart from the mark as shown.
`
`For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application
`System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp
`
`Given that the applicant did not comply with the request of the above-listed requirement, the requirement is MADE FINAL.
`
`IDENTIFICATION
`
`Applicant applied for the following: cosmetics; make-up; lipstick; blush; skin bronzer; eyeshadow; skin highlighter; eyeliner; false eyelashes;
`mascara; eyebrow products, namely, eyebrow pencil, gels, eyebrow colors; eyebrow cosmetics; false eyebrows; non-medicated skincare
`preparations; cosmetic preparations for skin care; creams; lotions ; cosmetic oils
`
`Applicant must further clarify the wording “gels” and “creams; lotions” listed in the identification because it is indefinite and must be revised to
`list intended goods by common commercial name or phrasing that clearly identifies the intended goods. See TMEP §§1402.01, 1402.03.
`Applicant may change this wording to, if accurate, in Class 3:
`
`cosmetics; make-up; lipstick; blush; skin bronzer; eyeshadow; skin highlighter; eyeliner; false eyelashes; mascara; eyebrow products,
`namely, eyebrow pencil, eye gels, eyebrow colors; eyebrow cosmetics; false eyebrows; non-medicated skincare preparations; cosmetic
`preparations for skin care; cosmetic creams; body lotions; cosmetic oils
`
`Identification Manual
`
`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.
`
`Indefinite Terms
`
`Moreover, each identification must be specific and all-inclusive; therefore, applicant should refrain from using open-ended wording such as
`“including” or “and the like” and replace this wording with "namely" followed by the respective goods listed by their common commercial
`names. TMEP §§1402.01 and 1402.03(a). The identification must be specific and all-inclusive.
`
`Amending Identification/Broadening Scope
`
`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).
`
`Given that the applicant did not comply with the request of the above-listed requirement, the requirement is MADE FINAL.
`PROPER RESPONSE TO FINAL ACTION
`Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C.
`§1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:
`
`(1)      
`
`(2)      
`
`a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements
`and/or resolves all outstanding refusals; and/or
`
`an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA)
`with the required filing fee of $200 per class.
`
`37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
`
`In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
`procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee
`required for filing a petition.  37 C.F.R. §2.6(a)(15).
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`PRO SE RESPONSE GUIDELINES and ABANDONMENT ADVISORY
`
`For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the
`action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should
`register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options
`carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or
`statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a
`response online, see “ Responding to Office Actions” on the USPTO’s website.
`
`If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the
`application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP
`§§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R.
`§§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
`
`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
`
`PLEASE NOTE:
`
`The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications
`and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email
`address for receiving correspondence from the USPTO.  See the Mandatory Electronic Filing Rules webpage for more information.
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.   See TMEP §§705.02,
`709.06.
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations,
`TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without
`
`incurring this additional fee.   
`
`/S. Young/
`Examining Attorney
`Law Office 117
`(571) 272-9713
`skye.young@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 the Trademark Electronic Application System (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.  
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`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 the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.
`
` 
`  
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Smith, Jessica (jessica.standley@hotmail.com)
`
`U.S. TRADEMARK APPLICATION NO. 87681223 - BLANK BEAUTY - N/A
`
`6/28/2018 10:21:02 PM
`
`ECOM117@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 6/28/2018 FOR U.S. APPLICATION SERIAL NO. 87681223
`
`Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an
`official letter to which you must respond.  Please follow these steps:
`
`(1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S. application serial number, and clicking
`on “Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`
`hours of this e-mail notification.  
`(2)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 6/28/2018, using the Trademark Electronic
`Application System (TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  A response transmitted through
`TEAS must be received before midnight Eastern Time of the last day of the response period.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions.  
`(3)  QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
`application, identified below.  
`
`/S. Young/
`Examining Attorney
`Law Office 117
`(571) 272-9713
`skye.young@uspto.gov
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.  
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`
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`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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