Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION ABOVE, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS REFUSAL WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

The “Mailing Date” appearing on the WIPO cover letter may also be found through the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please enter the U.S. Application Serial Number for this application and select “Documents.” The “Mailing Date” is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the 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 if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and 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, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States.

(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.

Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Nevertheless, the applicant must respond to the following issues.

ENTITY

The designation “naamloze vennootschap” (NV) is included in applicant’s name, but the entity type is set forth as a “joint stock corporation” formed under the laws of Belgium. Generally, the designation “naamloze vennootschap” or “NV” identifies a “public limited liability company” or the United States equivalent of a “corporation.” See TMEP Appendix D.

Therefore, applicant must clarify the nature of its entity. See TMEP section 803.03 et seq.; 803.03(i). Any or all of the following designations would be acceptable, if accurate: (1) a naamloze vennootschap formed under the laws of Belgium; (2) a public limited liability company formed under the laws of Belgium or (3) a corporation formed under the laws of Belgium.

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1 because the application was void as filed. An application must be filed by the owner of the mark. 15 U.S.C. §1051; 37 C.F.R. §2.71(d); TMEP §§803.01, 803.06, 1201.02(b).

IDENTIFICATION OF GOODS

The identification of goods is largely indefinite and must be clarified because it does not identify all goods with the requisite clarity and specificity. See TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id. Applicant may therefore adopt any or all of the following identification, if accurate:

International Class 19; Building materials, not of metal, for connection purposes, namely, {indicate any and all materials by common commercial name}; Non-metal floors, namely, laminated floors, parquet floors, cork floors, bamboo floors; Flooring underlayments, not of metal; Non-metal profiles for floors, namely, floor boards, floor tiles and floor panels of various shapes; Non-metal expansion joints for floors; Construction materials, namely, non-metal materials for constructing floors in the nature of floor skirts and expansion profiles;

all aforementioned goods for interior decoration;

International Class 27; Carpets, rugs, floor mats, bath mats, door mats, linoleum, linoleum for use on floors; floor coverings; vinyl floor coverings; all aforementioned goods for interior decoration.

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the PTO website at http://www.uspto.gov by clicking “Trademarks” in the column menu on the left side of the page, and then selecting “Identification Manual” from the drop down menu.

An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. In addition, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

Please feel free to contact the undersigned attorney if you wish to discuss this application.

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

john.yard@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

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.