UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/034141
APPLICANT: DAVIDE CAMPARI-MILANO S.p.A.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CAMPARI BITTER FRATELLI CAMPARI SUCCESSO ETC.
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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 79/034141
INTERNATIONAL REGISTRATION NO. 0912167 .
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 USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of 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). Canadian attorneys can only represent Canadian applicants.
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 is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
However, applicant should note the following requirements.
Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.61(b); TMEP §809. In the present case, the wording “FRATELLI CAMPARI SUCCESSORI” and “MILANO” needs translating for the record. The following translation statement is suggested: “The English translation of the wording “FRATELLI CAMPARI SUCCESSORI” and “MILANO” in the mark is SUCESSORS OF THE COMPARI BROTHERS, and MILAN, repectively.”
Applicant must clarify whether the name in the mark identifies a particular living individual.
If the name in the mark identifies a particular living individual, then applicant must submit the following:
(1) a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and
(2) a statement that “DAVIDE CAMPARI identifies a living individual whose consent is of record.”
However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “DAVIDE CAMPARI does not identify a living individual.” Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.
If applicant is the owner of U.S. Registration Nos. 0262694, 0649057 and 2787820, copies attached, among others, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 0262694, 0649057, 2787820 and others.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
The English translation of non-English wording in the mark that is descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods or services, is an unregistrable component of the mark and is subject to a proper disclaimer requirement in the same way that the English version would be subject to a disclaimer. TMEP §1213.08(d).
Applicant must disclaim the descriptive wording “BITTER,” “MILANO” and “MILANO, ITALY” apart from the mark as shown because it merely describes a characteristic of applicant’s goods, to wit, that its goods originate from Milan, Italy, and that they are bitters, or are bitter in flavor. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The format for the disclaimer statement must refer to the actual non-English wording that appears in the mark, not the English translation of that wording. TMEP §1213.08(d). A properly worded disclaimer would thus read as follows:
No claim is made to the exclusive right to use “BITTER” “MILANO,” and “MILANO, ITALY” apart from the mark as shown.
The wording “alcoholic beverages” in the identification of goods is indefinite and must be clarified because it includes items a wide variety of particular goods, each of which would need to be particularly included. TMEP §§1402.01 and 1402.03. Applicant must specify the particular types of alcoholic beverages, other than beers, intended.
Also, The identification of goods contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only 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. Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to this wording must identify goods in International Class 33, the classification specified in the application for these goods.
The following substitute wording is suggested, if appropriate: “alcoholic beverages except beers, namely, alcoholic bitters and liqueurs.”
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods 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.gov.uspto.report/netahtml/tidm.html.
Applicant has submitted a color drawing and color claim, but has not submitted the required color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.
Also, applicant must use common color names (e.g., magenta, yellow, turquoise) in its color claim and color location statement. “Bordeaux” is not a common color name. Commercial color names must be supplemented with a generic description of the color(s). TMEP §§807.07(a)(i) and (a)(ii).
Therefore, applicant must submit a corrected color claim and a description of where the colors appear in the mark that agrees with the colors depicted in the drawing of the mark. The following color claim and location statement format is suggested:
(1) Color claim: “The colors [specify] are claimed as a feature of the mark”; and
(2) Color location statement: “The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”
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.
/mfp/
Mark FP. Pilaro
Trademark Examining Attorney
Law Office 104
Phone- (571) 270-1513
Fax- (571) 270-2513
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
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.