Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following to the goods in International Classes 018 and 025: “furniture coverings of leather,” “fur,” “shopping bags,” “bags,” “hat boxes for travel,” and “traveling sets” in International Class 018 and “children’s headgear” and “articles of clothing, footwear, and headgear for babies and toddlers” in International Class 025. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.

SUMMARY OF ISSUES:

Identification of Goods Requires Amendment
Partial Abandonment Advisory

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).

IDENTIFICATION OF GOODS REQUIRES AMENDMENT:

The identification of goods contains indefinite language and must be clarified because particular wording, such as “bags,” “headgear,” and “travelling sets” could identify goods outside of the International Classes specified in the application. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

In addition, the wording “furniture coverings of leather” in International Class 018 is indefinite and must be clarified because it does not appear to describe any goods in the identified international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because “furniture coverings of leather” is indefinite and does not appear to describe any goods in International Class 018. See TMEP §1904.02(c)(iii).

Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 018 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international classes assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).

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 of the World Intellectual Property Organization (International Bureau) in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods in International Classes 014, 018, and 025, respectively, the classification assigned by the International Bureau for these goods.

The following substitute wording is suggested, if accurate:

International Class 014: Imitation jewelry; costume jewelry; jewelry and imitation jewelry, namely, trinkets, charms, threads of precious metal, bracelets, necklaces, lockets, chains, rings, brooches, medallions, medals, pins, amulets; earrings; diadems; ornamental pins; tie pins; pendants; cuff links; fancy keyrings of precious metals; precious metal key chains; precious metal key holders; precious metal key rings, being trinkets or fobs; badges of precious metal; jewelry cases, being caskets or boxes, not of precious metal; jewelry cases, being caskets; shoe ornaments of precious metal; hat ornaments of precious metal; decorative boxes made of precious metal; trophies of precious metal; statues of precious metal; figurines, being statuettes, of precious metal; statuettes of precious metal; works of art of precious metal; children’s jewellery, namely, trinkets, charms, bracelets, necklaces, lockets, chains, rings, brooches, medallions, medals, amulets, earrings; clocks; wall clocks; watches; alarm clocks; chronometers; chronographs as watches; wristwatches; stopwatches; pocket watches; cases for clocks and watches; watch bands; watch straps; watch chains; watch bracelets.

International Class 018: Boxes of leather or leatherboard; cases, of leather or leatherboard; leather straps; card cases, being notecases; credit card cases, being wallets; calling card cases; furniture coverings of leather; business card cases; document cases; leather address hang-tags; clothing for pets; collars for pets; bags for carrying animals; leather, unworked or semi-worked; moleskin, being imitation of leather; fur-skins; raw skins; fur pelts; artificial fur; synthetic fur; animal skins; animal hides; handbags; evening handbags; _______ {specify material in this class e.g., canvas, mesh, textile} shopping bags; leather shopping bags; duffel bags; waist bags; ________ {specify type in this class e.g., barrel bags, travelling bags, weekend bags} bags; Boston bags; shoulder bags; traveling trunks; beach bags; clutch bags; attaché cases; school bags; school satchels; school children's backpacks; bags for sports; garment bags for travel; purses; coin purses; wallets; pocket wallets; carrying cases for documents; keycases; key bags; key wallets; backpacks; briefcases; luggage; pouches for holding make-up, keys and other personal items; shoe bags for travel; all purpose sports bags; tote bags; knapsacks; rucksacks; haversacks; suitcases; trunks, being luggage; vanity cases, not fitted; hat boxes for travel not of paper or cardboard; hat boxes of leather; handbag frames; leather key cases; leather shoulder belts; leather pouches; leatherware, namely, traveling sets consisting of ____ {identify goods in this class, e.g. suitcases, briefcases, empty toiletry cases}; traveling bags of leather; sling bags for carrying infants; pouch baby carriers; backpacks for carrying babies; traveling bags; tie cases; luggage tags; all-purpose carrying bags; toiletry bags sold empty; carrying cases; traveling cases; cosmetic cases sold empty; umbrellas; parasols; walking sticks; whips; mountaineering sticks; canes; harness fittings; harnesses; saddlery.

International Class 025: Jackets, being clothing; sleeved or sleeveless jackets; heavy jackets; lightweight jackets, being clothing; bomber jackets; reversible jackets; rain jackets; leather jackets; padded jackets; wind-resistant jackets; waterproof jackets; stuff jackets, being clothing; down jackets; sleeveless down jackets; sports jackets; ski jackets; snowboard jackets; long jackets; windcheaters; ski windcheaters; snowboard windcheaters; anoraks; down anoraks; parkas; down parkas; fur jackets; waistcoats; waistcoats with removable lining; overcoats; coats; fur coats; raincoats; cardigans; pullovers; shirts; T-shirts; polo shirts; sport shirts; undershirts; shirts for wear with suits; chemises; camisoles; blouses; blousons; sweatshirts; sweaters; jumpers, being pullovers; jerseys, being clothing; sports jerseys; trousers; ski trousers; snowboard pants; ski pants; shorts; Bermuda shorts; jeans; skirts; overalls; track suits; ski suits; snowboard suits; suits; dresses; gowns; blazers; headbands, being clothing; twin sets; leggings, being trousers; leggings, being leg warmers; dungarees; ready-made clothing, namely, shirts, tops and dresses; tops, being clothing; tank-tops; knitwear, being clothing, namely, tops, scarves and hats; hosiery; clothing of leather or imitations of leather, namely, pants, shirts, shorts and dresses; furs, being clothing, namely, fur coats and jackets; waterproof clothing, namely, pants, shirts, shorts and dresses; pants; pelerines; rompers; leotards; slacks; athletic uniforms; breeches for wear; golf clothing, other than gloves, namely, pants and shirts; cuffs; ski masks, being clothing; eyeshades, being clothing; bathing caps; swimming caps; beach clothes, namely, bathing suits and swim shorts; swimming costumes; swimsuits; bathing drawers; bathing trunks; bikinis; bath robes; pareus; bathing costumes; children's clothing, namely, pants, shirts, shorts and dresses; children's footwear; children's headgear, namely, ____ {specify type, e.g., hats, baseball caps, etc.}; articles of clothing, footwear and headgear for babies and toddlers, namely, ___ {specify type, e.g., hats, shoes, sweaters, pants, etc.}; babies' pants, being clothing; bibs, not of paper; layettes, being clothing; baby sleeping bags, namely, infant sleep sacks in the nature of infant sleepers without individual legs; baby body suits; baby tops; baby bottoms; socks; stockings; tights; pantyhose; shoes; leather shoes; sports shoes; gymnastic shoes; beach shoes; mountaineering shoes; running shoes; ski footwear; after ski footwear; footwear for snowboarding; rain footwear; sneakers; slippers; bath slippers; sandals; bath sandals; flip flops, being footwear; boots; half-boots; lace boots; rain boots; ski boots; after ski boots; snowboard boots; boots for sports; horse-riding boots; clogs; dance shoes; golf shoes; climbing boots; scarves; cloaks; shawls; stoles; fur stoles; foulards, being clothing articles; neckwear; pocket squares; clothing, namely, gloves, muffs, mittens; ski gloves; snowboard gloves; clothing, namely, belts and money belts; braces for clothing, being suspenders; suspenders; waistbands, being parts of clothing; sashes for wear; underwear; underpants; pajamas; dressing gowns; nightgowns; vests; lingerie; headwear; ear muffs, being clothing.

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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.

Response Guidelines and Partial Abandonment Advisory:

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, the following goods will be deleted from the application: “furniture coverings of leather,” “fur,” “shopping bags,” “bags,” “hat boxes for travel,” and “traveling sets” in International Class 018 and “children’s headgear” and “articles of clothing, footwear, and headgear for babies and toddlers” in International Class 025. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §§711, 718.02(a). The application will then proceed with all of the other goods identified in the application. See TMEP §718.02(a). In such case, an applicant may timely file a petition to revive the abandoned goods, which, if granted, would allow for the reinsertion of these goods into the application. See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).

FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods “furniture coverings of leather,” “fur,” “shopping bags,” “bags,” “hat boxes for travel,” and “traveling sets” in International Class 018 and “children’s headgear” and “articles of clothing, footwear, and headgear for babies and toddlers” in International Class 025, will be deleted from the application.

In such case, the application will then proceed with all other goods except for those identified above. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Rachel E. Buker/

Examining Attorney

Trademark Law Office 123

Phone: (571) 270-0104

Email: Rachel.Buker@USPTO.gov

(Informal communications only – Do not respond to Office action via email.)

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.