UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79196055
MARK: FO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: KAPSULA S.R.L.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1318675
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 OF OFFICE’S DATABASE OF MARKS
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).
INFORMALITY
Applicant must respond to the requirement(s) set forth below.
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may adopt the following identification, if accurate:
“Jewelry findings; amulets jewelry, jewelry (Am.), namely, [specify types, e.g., jewelry for occasions, jewelry worn in the morning, cufflinks, etc.]; jewelry (Am.), namely, jewelry rings; friendship rings; body-piercing rings; rings coated with precious metals; body-piercing studs; decorative articles trinkets or jewelry for personal use; paste jewellery jewelry (Am.), namely, costume jewelry; jewels; horological articles; cuff links; bracelets; bracelets and watches combined; key rings trinkets or fobs; gold chains; chains jewelry; jewel chains; jewelry chain of precious metal for necklaces; jewelry rope chain for necklaces; jewelry rope chain for anklets; bracelets for watches; charms; jewelry clips for adapting pierced earrings to clip-on earrings; jewelry cases caskets or boxes; necklaces; decorative cuff link covers; tie bars; tie pins of precious metal; badges of precious metal; metal badges for wear precious metal; lapel badges of precious metal; flexible wire bands for wear as a bracelet; cuff links and tie clips; jewelry made of precious metals; jewelry fashioned from non-precious metals; gold jewelry; medallions; jewelry (Am.), namely, lockets jewelry; medallions made of non-precious metals; medallions made of precious metals; scale models ornaments of precious metal; objet d'art made of precious stones; earrings; imitation jewelry ornaments; jewelry ornaments; clocks; watch chains; pendant watches; women's watches; divers' watches; mantle clocks; wall clocks; wall clocks or horological instruments; wristwatches; desk clocks; pocket watches; table clocks; travel clocks; jewelry, clocks and watches; key rings trinkets or fobs of precious metal; key chains as jewelry trinkets or fobs; key fobs of precious metals; fancy keyrings of precious metals; key fobs rings coated with precious metal; sculptures of precious metal; ornamental sculptures made of precious metal; pins being jewelry; tie pins; decorative brooches jewelry; alarm clocks” in International Class 14.
“Attachments for pencils; aquarelles; day planners; scrapbooks; writing stationery; office paper stationery; stationery; stationery, namely, paper gift cards; paper stationery; office stationery; party stationery, namely, [specify, e.g., Paper party bags; party paper decorations, etc.]; scented paper stationery; office requisites; paper towels; paper handtowels; drying towels of paper; face towels of paper; cases made of corrugated cardboard; document portfolios of paper; cases for stationery; map cases of paper; drawing sets; checkbook cases; writing cases stationery; correcting and erasing implements, namely, [specify types, e.g., fluids, paper, etc.]; writing and stamping implements; paper badges; ink sticks; chart pointers, non-electronic; make-up pads or tissues of paper for removing make-up; bibs of paper; table linen of paper; ball pens; note pads; stationery pads; adhesive note pads; notepads; writing tablets; shopping bags made of paper; wristbands for the retention of writing instruments; inkwells; desk calendars; printed calendars; rubber erasers; artists' charcoals; charcoal pencils; carbon paper; paper; hygienic paper; paper toilet rolls; paperweights; desk pads; conference folders; folders for papers; folders stationery; clipboards; refills for ballpoint pens; fountain pen ink cartridges; tablemats of paper; paper doilies; table centerpieces of paper; sealing wax; desk trays; pen clips; desk mounted cabinets for stationery; office requisites; stamp cases; glues for office use; crayons; letter-openers; gift packaging papers; paper boxes; cardboard containers; notebook covers; table runners of paper; crossword puzzles; pencil cases; passport cases; pen boxes; date stamps; drawings; drawing instruments; automatic adhesive dispensers for office use; document shredders or destroyers as office machines; finger-stalls office requisites; elastic bands for offices; decorative pencil-top ornaments; highlighting markers; marker pens; tissues or paper tissues; page holders; staples for offices; paper fasteners; clips for paper stationery; money clips of precious metals; drawing materials; writing materials; school supplies namely, stationery; pencil sharpening machines, electric or non-electric; pencil sharpeners, electric or non-electric; office type composing machines; terrestrial globes; maps made of flexible plastics; comics; marking chalk; pastes or other adhesives for stationery or household purposes; bottle envelopes of cardboard or paper; coin wrappers; gift wrap; slate pencils; blackboards; whiteboards; writing slates; small blackboards; staple removers; booklets; books in the field of [specify subject matter, e.g., history, world wars, economic, entertainment, etc.]; pencils; pencils with tips of metal or silver; automatic pencils; color pencils; correction pencils; artists' pencils; painting pencils; pencil leads; colored lead pencils; retractable pencil leads; pen wipers; daily planners; pencil ornaments stationery; table cloths of paper; modelling paste; red ink paste used for seals; pastels; pastel crayons; highlighter pens; pens; felt pens; India ink pens; ball-point pens; pens office requisites; glitter pens for stationery purposes; colored pens; fiber tip pens; pens with tips of metal or silver; pens of precious metal; artists' pens; coloring pens; correction pens; etching pens; nibs; nibs of gold; gel roller pens; fountain pens; paint brushes; writing brushes; paintbrushes; steel pens; watercolor saucers for artists; ink stones; holders for desk accessories; advertisement boards of paper or cardboard; checkbook covers; holders for notepads; letter holders; pencil holders; pencil lead holders; penholders; stamp mounts; document holders stationery; chalk holders; coin or money holders; desktop organizers for stationery use; passport covers; pencil cups; pen trays; disposable papers for personal hygienic use in the nature of disposable headrest covers not for medical use; erasers; extensions for pencils; pencil point protectors; tips for ballpoint pens; tracing needles for drawing purposes; thumbtacks stationery; writing or drawing books; document folders in the form of wallets; ink pen refill cartridges; pencil lead refills; marking pen refills; pen ink cartridges; address books; telephone directories; paper for bags and sacks; facial tissues of paper; tissues of paper for removing make-up; napkins of cellulose for cosmetic purposes; gift cartons made of cardboard; boxes of cardboard or paper; bookmarkers; place cards; writing cases sets; place mats of paper; pencil sets; pen sets; writing sets; seals stamps; shields for paper seals; pen rests; stands for pens and pencils; coasters of paper; coasters of cardboard; table place setting paper mats or cardboard; map pins; finger moisteners; moisteners office requisites; pen stands; paper washcloths; writing instruments; photograph stands; stands for writing implements; holders for stamps seals; notebooks; jotters; pocket notebooks; paper cutters; guillotine machines for office use; paper knives as office requisites; letter openers of precious metal; blotting paper; palettes for painters; paper drop cloths; face cloths made of paper; pencil sharpeners; electric pencil sharpeners; sharpeners for cosmetic pencils; paper table covers; dinner mats of cardboard; dinner mats of paper; disposable table napkins of paper or cellulose; table napkins of paper; napkins made of paper for household use; napkins of cellulose for household purposes; paper shredders for office use; cardboard tubes; moisteners for gummed surfaces office requisites; chalk boards for display purposes” in International Class 16.
“Cupboards; pedestal cabinets; display cabinets; furniture, namely display counters non-electric; sideboards; settees; wood crates; wooden chests with drawers covered with decorated paper; plastic crates; letter boxes, not of metal or masonry; dressers; baskets, not of metal; decorative baskets made of wood; caskets; bedside cabinets; furniture, namely, mobiles decoration; tea carts; cradles; cushions; scented pillows; fixed towel dispensers, not of metal; towel dispensers, fixed, not of metal; divans; room dividers; display racks; inflatable pillows; inflatable pillows other than for medical use for fitting around the neck; plastic key cards, not encoded and not magnetic; outdoor furniture; mobile bar units furniture; lawn furniture; inflatable furniture; wooden furniture; furniture of plastic materials; storage modules as furniture; inflatable publicity objects; furniture, namely, wickerwork’s; umbrella stands; benches as furniture; screens as furniture; writing desks; table tops; decorative plaques made of plastics material as furniture; armchairs; hat stands; tie racks; book rests as furniture; magazine racks; bottle racks; holders for photographs frames; holders for pennants; bean bags; shoe cabinets; boxes of wood; caskets made of wood; seats; sun loungers; contour chairs; stools; sofas; pedestal tables; Japanese style low tables or stake; drafting tables; tables for use in gardens; dining room tables; coffee tables; tea tables; pasting tables; planning tables; slatted indoor blinds; vitrines; air pillows, not for medical purposes” in International Class 20.
Note;
“The following goods a) bamboo canes”; b) tissue dispensers fixed not of metal; c) paper towel dispensers fixed; and d) fireguards are deleted from identifications in class 28 for misclassification.
An applicant may amend an identification of goods and services only to clarify or limit the goods and 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., 1402.07 et seq.
ID MANUAL IS AVAILABLE ONLINE
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
GENERAL INQUIRY ON SIGNIFICANCE
Applicant must explain whether “FO” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place or has any meaning in a foreign language. See 37 C.F.R. §§2.32(a) (9), (a) (10), 2.61(b); TMEP §§809, 814. An applicant must submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling, in Latin characters, of terms in the mark in non-Latin characters) of all non-Latin characters in a mark. 37 C.F.R. §2.32(a) (9), (a) (10); TMEP §809. If the wording does not have meaning in a foreign language, applicant should so specify. See 37 C.F.R. §2.61(b); TMEP §809.03.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P ’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
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 U.S. commonwealths or U.S. territories. 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.
/Zachary Bello/
Attorney Advisor
Law Office 111
USPTO
571-272-9376
zack.bello@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.