UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/043684
MARK: WINCH
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: CreaLuxe SA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0937031.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
(2) Canadian attorneys who represent applicants residing in Canada and 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.
Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). 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, 603.04, 605.05(a).
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.
The applicant must respond to the following requirements.
UNACCEPTABLE IDENTIFICATION
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
The identification of goods and/or services 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/or services and incorporate the parenthetical information into the description.
The identification of goods is indefinite and must be clarified because it includes the open-ended wording “in particular” and “including.” TMEP §§1402.01 and 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”
In addition, applicant must replace the wording “or” as this wording is indefinite and use the wording “and” instead.
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
Suggestions and explanations are incorporated into the proposed identification below. Applicant may adopt the following if appropriate.
International Class 14
The wording in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. TMEP §§1402.01 and 1402.03.
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 and/or services in International Class 14, the classification specified in the application for these goods and/or services.
The following substitute wording is suggested, if appropriate:
“Precious metals and their alloys and goods made of these materials or and plated therewith included in this class namely,
{indicate common commercial name}; jewelry, precious stones; timepieces and chronometric instruments; watches, wristwatches, mechanical wristwatches, chronographs, stop watches; clock and watch
hands, watch cases, dials, watch bands, watch springs, clock and watch movements namely, {indicate common commercial name as the wording watch movements is indefinite}, barrels
namely, {indicate common commercial name of these goods that are in International Class 14}, watch chains, watch crystals; watch and clock presentation cases, cases for clocks
and watches” in International Class 14.
International Class 16
The wording in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. TMEP §§1402.01 and 1402.03.
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 and/or services in International Class 16, the classification specified in the application for these goods and/or services.
The following substitute wording is suggested, if appropriate:
“Paper, cardboard and goods made of these materials, included in this class namely, {indicate common commercial name of the goods made of these materials};
printed matter namely, {indicate common commercial name e.g., printed guides for {applicant must also specify area of use or indicate subject matter}; bookbinding material
namely, {indicate common commercial name, e.g., bookbinding tape and wire}; photographs; stationery, writing materials namely, {indicate common commercial name
e.g., bookkeeping books}, pencils, pencil holders, fountain pens, pen cases, nibs, nibs of gold, pen holders, pens; adhesives for stationery or household purposes; artists' supplies namely, {indicate common commercial name, e.g., brushes, pastels, pencils, etc.}; paintbrushes; typewriters and office requisites namely, {indicate common commercial
name, e.g., desk calendars} (except furniture); instructional and teaching material in the field of {specify area of use}; (except apparatus); plastic
materials for packaging, included in this class namely, {indicate common commercial name of specific material that is an International Class 16 good, e.g., rubbish bags};
printing type; printing blocks” in International Class 16.
International Class 18
The wording in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. TMEP §§1402.01 and 1402.03.
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 and/or services in International Class 18, the classification specified in the application for these goods and/or services.
The following substitute wording is suggested, if appropriate:
“Leather and imitation leather, goods made thereof included in this class namely, {indicate common commercial name}; animal skins and hides; trunks and suitcases; small suitcases, attaché cases, briefcases, handbags, traveling bags, traveling sets consisting of namely, {indicate common commercial name, e.g., traveling bags}, sports bags, backpacks, purses, wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery” in International Class 18.
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.
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.
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).
Applicant must specify whether “WINCH” has any significance in the applicant’s trade or industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
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.
/Napoleon K. Sharma/
Trademark Examining Attorney
Law Office 107
571-272-3387
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.