UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/020422
APPLICANT: RAINBOW S.R.L.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: WINX CLUB
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 79/020422
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:
(1) Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney will be considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned Examining attorney has reviewed the referenced application and determined the following.
1. Information: No Similar Marks
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The applicant must respond to the following requirements.
Applicant must specify his or her national citizenship for the record. Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.
3. Advisory: Entity Information
Applicant’s entity information was amended to LIMITED LIABILITY JOINT STOCK COMPANY to reflect the U.S. equivalent of an S.R.L. TMEP § 803.03(i)
4. Requirement: Amend Description of the Mark
Applicant must submit a concise description of the mark that explains what the design element depicts. 37 C.F.R. §2.37; TMEP §§808 et seq. The following is suggested:
The mark consists of the words "WINX CLUB" written in a stylized form, and with the letter X formed from a butterfly design.
5. Requirement: Correct Identification of Goods & Services
The applicant must correct several items listed in the identification of goods and services.
a. as to goods in precious metals or coated therewith, not included in other classes
The current wording goods in precious metals or coated therewith, not included in other classes used to describe the goods needs clarification because it does not sufficiently describe the type of goods by their common commercial name. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: [specify good, e.g., candle holders, egg cups, etc.] precious metals or coated therewith, in International Class 14. TMEP §1402.01.
b. as to goods made of these materials and not included in other classes (referring to Leather and imitations of leather)
The current wording goods made of these materials and not included in other classes (referring to Leather and imitations of leather) used to describe the goods needs clarification because it does not sufficiently describe the type of goods by their common commercial name. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: [specify good, e.g., billfolds, coin purses, etc.]of leather or imitation leather, in International Class 18. TMEP §1402.01.
c. as to hides
Applicant must clarify the identification of hides to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may adopt the following identification of goods, if accurate: animal hides, in International Class 18. TMEP § 1402.01.
d. as to harness
The current wording “harness,” used to describe the goods needs clarification because it does not identify goods, and appears to be a typographical error or misspelling. Applicant must clarify the identification of goods by amending the wording to “harnesses,” if accurate. TMEP §1402.01.
e. as to Textiles and textile goods, not included in other classes
The current wording textiles and textile goods, not included in other classes used to describe the goods needs clarification because either the type of textile or the area of use for the textile must be specified, or the type of textile good must be specified. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: Textile fabric for [specify use, e.g., use in the manufacture of clothing, home and commercial interiors, etc.], in International Class 24; and/or [specify textile type, e.g., silk-wool blend, etc.] textile fabric, in International Class 24; and/or Textile [specify textile good, e.g., labels, napkins, etc.], in International Class 24. TMEP §1402.01.
f. as to as to bed covers
Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may adopt the following identification of goods, if accurate: Bed [specify common commercial name, e.g., linens, spreads, sheets, etc.], in International Class 24. TMEP § 1402.01.
g. as to table covers
Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may adopt the following identification of goods, if accurate: table [specify common commercial name, e.g., toppers of fabric, linen, etc.], in International Class 24. TMEP § 1402.01.
h. as to artificial coffee
Applicant must clarify the identification of artificial coffee to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may adopt the following identification of goods, if accurate: coffee substitutes, in International Class 30. TMEP § 1402.01.
i. as to preparations made from cereals
The current wording preparations made from cereals used to describe the goods needs clarification because it does not sufficiently describe the type of food. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: cereal based snack foods, in International Class 30. TMEP §1402.01.
j. as to pastry
The current wording pastry used to describe the goods needs clarification because the type of good related to pastry must be specified, or the plural form must be used. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: Pastries, in International Class 30; and/or pastry shells for monaka, in International Class 30. TMEP §1402.01.
k. as to confectionery
The current wording confectionery used to describe the goods needs clarification because it does not sufficiently describe the type of confectionery. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: confectionery, namely, [specify confectionery, e.g., fruit jellies, peanut butter confectionery chips, etc.], in International Class 30. TMEP §1402.01.
l. as to ices
The current wording ices used to describe the goods needs clarification because the type of ices must be specified. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: [specify type, e.g., flavored, edible fruit, etc.] ices, in International Class 30. TMEP §1402.01.
m. as to sauces (condiments)
Applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications 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 of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. Applicant may adopt the following identification, if accurate: sauces, in International Class 30. TMEP §1402.01.
n. as to other non-alcoholic drinks
The current wording other non-alcoholic drinks used to describe the goods needs clarification because it does not sufficiently describe the type of non-alcoholic drink. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: non-alcoholic [specify type of drink, e.g., aperitifs, fruit juice beverages, etc.], in International Class 32. TMEP §1402.01.
o. as to preparations for making beverages
The current wording preparations for making beverages used to describe the goods needs clarification because it does not sufficiently describe the type of beverage. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: preparations for making [specify type of beverage, e.g., fruit drinks, etc.], in International Class 32. TMEP §1402.01.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
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.
/Joanna M. Dukovcic/
Trademark Examining Attorney
Law Office 101
Phone: (571) 272-9707
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.