Offc Action Outgoing

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:

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.

NO CONFLICTING MARKS:

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

REGISTRATION REFUSED – NAME DIFFERS ON U.S. APPLICATION & FOREIGN REGISTRATION:

Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign application or registration on the filing date of the U.S. application. See 15 U.S.C. §§1051(a), 1126(e); TMEP §1005. Under Section 44(e), an applicant must be the owner of the foreign application or registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991). However, in this case, the foreign registration specifies an owner other than the U.S. applicant. Specifically, the U.S. application specifies the owner as CREATIVE BRANDS, C.V., while the foreign registration specifies the owner as PEEK & CLOPPENBURG KG.

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application. TMEP §1005. In that case, applicant must submit a certified copy or certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to applicant on or before the filing date of the U.S. application. See TMEP§§1005, 1006.

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may respond by deleting the Section 44(e) basis and relying solely on Section 1(b) as the basis for registration. TMEP §806.04.

RESPONSE:

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

TRANSLATION INQUIRY:

Applicant must specify whether “SARRIÁ” in the mark has any meaning in a foreign language. See 37 C.F.R. §2.32(a)(9); TMEP §§809, 814. An applicant must submit an English translation of all foreign wording in a mark. 37 C.F.R. §§2.32(a)(9), (a)(10); TMEP §809.

If this wording has meaning in a foreign language, applicant must submit a statement translating the non-English wording in the mark. 37 C.F.R. §2.32(a)(9); TMEP §809.

The following format is acceptable for a translation statement:

The English translation of SARRIÁ in the mark is “{insert English translation}.”

TMEP §809.03.

If this term has no meaning in a foreign language, applicant should provide the following statement: “The wording SARRIÁ has no meaning in a foreign language.” Id.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

Simon Teng

/Simon Teng/

Trademark Examining Attorney - USPTO

Tel: 571-272-4930

simon.teng@uspto.gov

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. 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.

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.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.

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