UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/522873
APPLICANT: Afshar, Homayoun
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*76522873* |
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CORRESPONDENT ADDRESS: MATTHEW A. BECKER THE LAW OFFICE OF MATTHEW A BECKER 1003 ISABELLA AVE CORONADO CA 92118-2863
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: ICE COLLECTION
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CORRESPONDENT’S REFERENCE/DOCKET NO: NSN270.18
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/522873
Second Action
This letter responds to the applicant's communication filed on May 14, 2004. The examining attorney withdraws the Section 2(a) refusal. The applicant should note that the third party registrations were not considered because third party registrations may be made of record when accompanied by legible, soft copies of the registrations themselves or the electronic equivalent thereof, i.e. printouts of the registrations from the electronic records of the Patent and Trademark Office’s automated search system. Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
REFUSAL OF REGISTRATION: DESCRIPTIVENESS-SECTION 2(e )(1)
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
The applicant’s proposed mark is ICE COLLECTION. As stated in the first Office action, ICE is a another term for DIAMONDS. COLLECTION is a term frequently used in relation to jewelry and watches to denote a group. The applicant’s watches will contain diamonds. ICE COLLECTION describes a group of watches that contain diamonds. Please see the attached NEXIS stories that discuss DIAMOND WATCH COLLECTION, DIAMOND COLLECTION in relation to WATCHES, and DIAMOND COLLECTIN in relation to jewelry.
IDENTIFICATION OF GOODS
The examining attorney maintains and makes FINAL the requirement for an acceptable identification of goods.
The proposed amendment of the identification is unacceptable because the wording “watches“ designates goods that are not within the scope of the identification that was set forth in the application. While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07. Specifically, in the application, the applicant identified particular types of watches and did not do so in its amendment. The applicant may adopt the following, if accurate: watches made in whole or substantial part of diamonds, namely, wristwatches, pocket watches, diving watches.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
To reach the undersigned attorney by telephone after October 12, 2004, please call (571) 272 -9214.
/Kim Saito/
Examining Attorney, Law Office 102
703-308-9102 ext. 130
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
For inquiries or questions about this office action, please contact the assigned examining attorney.
MAIL-IT REQUESTED: AUGUST 5, 2004 10083K
CLIENT:
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
DIAMOND WATCH COLLECTION
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 9
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
6-9
DISPLAY FORMAT: KWIC
MULTIPLE DOCUMENTS ON A PAGE
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************07057**********************************
Copyright 2001 MediaNews Group, Inc. and ANG Newspapers
Tri-Valley Herald (Pleasanton, CA)
December 11, 2001 Tuesday
SECTION: BUSINESS
LENGTH: 607 words
HEADLINE: All that glimmers;
Cartier puts on glitz in Palo Alto
BYLINE: By Tim Simmers Business Writer
DATELINE: PALO ALTO
BODY:
... gold bracelet on the receiver's wrist and screws it shut, demonstrating a sign of commitment.
Cartier also has a beautiful diamond watch collection, testament that it is as much a watchmaker as a jeweler.
Founded in 1847 by Louis-Francois Cartier during ...
Copyright 1996 Capital City Press
The Advocate (Baton Rouge, Louisiana)
May 12, 1996 Sunday METRO EDITION
SECTION: NEWS; Pg. 4H; COFFEE WITH CAROL ANNE AND MARY
LENGTH: 3956 words
HEADLINE: Woman's Club celebrates 75 years of continual activity
BODY:
... Green board president Ann Wilkinson welcomed guests.
As guests gathered early in the evening, Cartier displayed its
prized diamond watch collection at a Cartier Boutique in the large
foyer. Models exhibited jewelry and watches from Lee Michael's Fine
Jewelry and ...
Copyright 1992 Information Access Company, a Thomson Corporation Company
ASAP
Copyright 1992 Capital Cities Media Inc.
WWD (Women's Wear Daily)
August 28, 1992
SECTION: Vol. 164 ; No. 42 ; Pg. 13; ISSN: 0149-5380
LENGTH: 139 words
HEADLINE: Chanel goes platinum; Chanel markets new platinum-case watches; Brief Article
BYLINE: Newman, Jill
NEW YORK - Chanel is building on its watch business, with platinum its latest addition.
The platinum-case watches with grosgrain straps will retail between $4,400 and $5,300, and will be in stores in November.
"Our watch business has been excellent," said Holli Perone, executive director of watches for Chanel Inc. "It's probably the fastest-growing division at Chanel."
Chanel introduced watches in 1987, and now has 14 styles, including a diamond watch. The collection retails from $1,375 to $45,000, with the bulk of the watches at $2,000 to $10,000.
In addition to being sold in all of the firm's 11 U.S. boutiques, the collection is offered in 25 department store doors and jewelry stores. Perone said distribution will be limited to the addition of less than a dozen doors over the next few years.
Copyright 1990 The Chronicle Publishing Co.
The San Francisco Chronicle
OCTOBER 25, 1990, THURSDAY, FINAL EDITION
SECTION: PEOPLE; Pg. B4; CITY STYLE SHOPS IN PARIS
LENGTH: 623 words
HEADLINE: A Boutique Shopping Spree
BYLINE: LOURDES LIVINGSTON
GRAPHIC: GRAPHIC (6),(1) Chanel watches from the Madamoiselle and Diamond Watch Collections (2) L'exterieur de la boutique (3) Tweed duffle coat by YSL Variations (4) Lounging suit with ...
MAIL-IT REQUESTED: AUGUST 5, 2004 10083K
CLIENT:
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
DIAMOND COLLECTION W/5 WATCHES
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 8
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
4
DISPLAY FORMAT: KWIC
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************07062**********************************
Copyright 2001 Times Publishing Company
St. Petersburg Times (Florida)
October 25, 2001, Thursday
SECTION: WEEKEND; SHOP; Pg. 51W
LENGTH: 168 words
HEADLINE: Clock watching
BYLINE: MARY JANE PARK
BODY:
... Sache. $29.99. Burdines.
This timepiece sparkles with tiny diamonds and has a crocodile-patterned red leather band. Anne Klein Diamond Collection watch. $125. Department stores.
Teach a child to keep track of the time with this Blue's Clues set, a sporty watch with ...
GRAPHIC:
... a sporty watch with shiny stones and an alarm clock; silver-tone metal wristwatch with charm; Anne Klein Diamond Collection watch.
MAIL-IT REQUESTED: AUGUST 5, 2004 10083K
CLIENT:
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
DIAMOND COLLECTION W/S JEWELRY
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 26
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
2,3,5,10,11,18,19,21,23
DISPLAY FORMAT: KWIC
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************07077**********************************
Copyright 2004 Times Publishing Company
St. Petersburg Times (Florida)
May 16, 2004 Sunday
SECTION: PASCO TIMES; Pg. 4
LENGTH: 1921 words
HEADLINE: WHAT'S HAPPENING
BODY:
... Village Jewels' Dade City store on May 8. The students read their essays and presented their focused family member with jewelry they had selected from the Kiefer Village Jewels Hot Diamonds collections.
Tori Stanley a Pasco Middle School seventh-grader and Caitlin Clarke seventh-grader at Weightman Middle ...
Copyright 2004 VNU Business Media, Inc.
All Rights Reserved
The Hollywood Reporter
January 28, 2004 Wednesday
LENGTH: 4888 words
HEADLINE: Gem Stars
BYLINE: Irene Lacher
BODY:
... wraparound style of the comet necklace but ends in a delicate flower. Chanel actually wasn't trying to get into the jewelry business when she designed her first diamond collection, "Bijoux de Diamants," for exhibition in her Paris mansion and
in New York the following year: Having eschewed precious ...
Copyright 2003 Akron Beacon Journal
All Rights Reserved
Akron Beacon Journal (Ohio)
September 18, 2003 Thursday 4X EDITION
SECTION: E; Pg. 2
LENGTH: 688 words
HEADLINE: Femininity, glamour hit runways in New York;
Buyers, media get look at spring collections during Fashion Week
BYLINE: By Suzanne S. Brown; Denver Post
DATELINE: NEW YORK
BODY:
... through the wee hours with parties. At Barney's, the windows were filled with gems and photographs of Ericson Beamon's 20 years of costume jewelry designs, while inside a party was under way to introduce the company's new diamond collection.
A few blocks over in the Central Park Zoo, Lacoste entertained hundreds who assembled to celebrate the opening of the ...
Copyright 2002 Times Publishing Company
St. Petersburg Times (Florida)
March 18, 2002, Monday
SECTION: LARGO TIMES; LOCAL BUSINESS; Pg. 1
LENGTH: 1008 words
HEADLINE: Silver, gold stores will get a new setting
BYLINE: CHRISTINA K. COSDON
DATELINE: LARGO
BODY:
... a small store aimed at coin collectors, and through the years it grew to include estate and close-out jewelry, watches and diamond collections. His son Jay is CEO and president of this business, and son Chris is vice president and also mayor of Belleair Bluffs.
In 1978, Mrs. ...
Copyright 2001 The Cincinnati Enquirer
All Rights Reserved
The Cincinnati Enquirer
November 20, 2001 Tuesday All Edition
SECTION: TMP; Pg. 7C
LENGTH: 502 words
HEADLINE: Style extra
BYLINE: JOY KRAFT
BODY:
... Ralice Custom Framing. Miss Martha's is at 2508 Dixie Highway, Fort Mitchell. Information: (859) 331-7878.
Jewelry trunk show: 2700 ERIE will have a trunk show of the M&J Savitt semi-precious collection and Janis Savitt's white gold and diamond collection 10 a.m.-4 p.m. Nov. 29 at the Hyde Park store. Janet Savitt's designs have been featured in the ...
Copyright 1999 The Patriot Ledger
The Patriot Ledger (Quincy, MA)
June 10, 1999 Thursday ROP Edition
SECTION: FEATURES; Pg. 24
LENGTH: 405 words
HEADLINE: SnapShots ;
TRY TO SWING BY
GRAPHIC: Photo,Associated Press - British actress Elizabeth Hurley arrives with her partner, Hugh Grant, at jewelry and fashion show in London yesterday, at which a multimillion-dollar diamond collection was unveiled. -- Patriot Ledger news services
Copyright 1999 Times Mirror Company
Los Angeles Times
March 5, 1999, Friday, Orange County Edition
SECTION: Southern California Living; Part E; Page 2; View Desk
LENGTH: 256 words
HEADLINE: PAGE 2 / NEWS, TRENDS, GOSSIP AND STUFF TO DO;
BEHIND THE SCENES;
A SPARKLING PERFORMANCE;
CHANEL'S NEW LINE OF JEWELRY WAS INSPIRED BY THE DESIGNER'S FAMOUS 1932 DIAMOND COLLECTION.
Copyright 1996 The Houston Chronicle Publishing Company
The Houston Chronicle
November 24, 1996, Sunday, 2 STAR Edition
SECTION: ZEST; Big City Beat; Pg. 7
LENGTH: 684 words
HEADLINE: Posh New York restaurant to reopen soon
BYLINE: MAXINE MESINGER; Staff
DATELINE: NEW YORK
BODY:
... other is a how-to book on starting a small
business. And for ''Entertainment Tonight,"" Ivana is
doing a jewelry tour, visiting such places as Van Cleef &
Arpel; the home of the Hope diamond; hopefully the Sultan of
Brunei's pink and blue diamonds collection, valued at $350,000
to $500,000 per carat; and other little ""trinkets. '' It will
air Dec. 3. . . .
On the ...
Copyright 1995 The Denver Post
All Rights Reserved
The Denver Post
August 18, 1995 Friday 2D EDITION
SECTION: LIVING; Pg. E-01
LENGTH: 536 words
HEADLINE: Jerry Garcia's neckties live on; scarves still to come
BYLINE: Francine Parnes
BODY:
... covet treasures such as Australian pink diamonds and Chanel handbags, now's the time to head west.
Christopher Walling, owner of his namesake jewelry boutique at 325 E. Hopkins Ave., recently debuted his pink diamond collection from the Argyle mines of Australia. He hosted an opening of the collection, which wrapped up Monday, to benefit scholarships for the Aspen Music ...