UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79121845
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CORRESPONDENT ADDRESS: STUDIO LEGALE AVV. LAURA TURINI Via Lamarmora, 55 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1139460
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION 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.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal 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). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
Search Results
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).
Mark Description
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the stylized number 12.
Identification of Goods
The identification of goods and services includes the heading of one or more international classes. The purpose of class headings is to indicate the subject matter and general scope of each international class of goods and services. See TMEP §1401.02(a). While such broad designations may be acceptable under the trademark laws and practice of other countries, the USPTO considers these headings too broad to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1297-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01 et seq., 1402.07(a).
An identification of goods and services in a U.S. application must be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d at 1298-99. Identifications may be amended only to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. The scope of the identification for purposes of permissible amendments to class headings is limited by both the ordinary meaning of the words in and the international class of the heading. See TMEP §§1402.06(a), (b), 1402.07(a).
Therefore, applicant must amend the class heading(s) to identify goods and services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a).
Additional information and suggestions are given below in bold and brackets. Applicant may adopt the following, if accurate:
“Bleaching preparations for laundry use and other substances for laundry use namely, [list specific items by common commercial or generic name in Class 3, e.g., detergent soap]; cleaning polishing, scouring and abrasive preparations; soaps for [indicate area of use, e.g., cosmetic use, laundry use]; perfumery, essential oils, cosmetics, hair lotions; dentifrices,” in International Class 3.
“Precious metals and their alloys; goods made of precious metal or plated therewith, namely, [specify by common commercial name in Class 14, e.g., boxes of precious metals, figurines of precious metals]; jewellery; precious stones; horological and chronometric instruments,” in International Class 14.
“Leather and imitation leather; goods made of leather and imitation leather, namely, [identify specific goods in Class 18, e.g., leather cases, imitation leather purses]; animal skins and hides; bags, namely, [specify by common commercial name in Class 18, e.g., bags for sports, messenger bags]; trunks and suitcases; umbrellas, parasols and walking sticks, whips, harnesses and saddlery,” in International Class 18.
“Clothing, namely, [specify by common commercial name in Class 25, e.g., shirts, pants]; footwear; headgear, namely, [specify by common commercial name in Class 25, e.g., hats, caps],” in International Class 25.
“Advertising; business management; business administration; providing office functions; business management advisory services relating to franchising, business management of a retail establishment for others, business management of retail sales outlets,” in International Class 35.
In addition, in a Section 66(a) application, 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), 1402.01(c). 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); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Response Guidelines
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Matt Einstein/
Matt Einstein
Trdemark Examining Attorney
Law Office 115
571-272-8251
matt.einstein@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.