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. 79223704
MARK: ALEXANDER MCQUEEN
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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: Autumnpaper Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1381598
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.
No Conflicting Marks Noted
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).
Entity Designation
Citizenship of Applicant
If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.
Inquiry Regarding Living Individual
Applicant must clarify whether the name ALEXANDER MCQUEEN in the mark identifies a particular living individual. See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03. In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent. See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.
To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “ALEXANDER MCQUEEN identifies [specify actual name], a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, [specify name], consent to the use and registration of my name, ALEXANDER MCQUEEN, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Recitation of Services
The identification of services is indefinite and must be clarified because applicant must clarify it is offering retail store services; in addition, applicant must remove its parenthetical references and must better define certain of its non-retail-related services, as identified and suggested below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may adopt the following wording, if accurate (suggested edits in bold):
Retail store services featuring perfumes, eaux de toilette, toilet soaps, creams, milks, lotions, gels and powders for the face, body and hands, sun-tanning milks, gels and oils and after-sun preparations being cosmetics, make-up preparation, shampoos, gels, mousses, balms and preparations in aerosol form for hairdressing and hair care, hair lacquers, hair-colouring and hair-decolorizing preparations, permanent waving and curling preparation, essential oils, non-medicated preparations for the application to, conditioning and care of hair, scalp, skin and nails, soaps, eau de cologne, toilet waters, essential and herbal oils, cosmetics, non-medicated toilet preparations, hairsprays, preparations for use in the bath or shower, bath and shower oils, gels, creams and foams, face and body masks, face and body scrubs, facial washes, skin cleansers and hydrators, skin toners, skin moisturisers, blemish creams and blemish gels, deodorants, nail polish, lipstick, eyeliner, preparations for use before shaving and after shaving, shaving soaps, shaving creams, shaving gels, aftershave preparations, pre-shave preparations, talcum powders, toiletries, dentifrices, toothpastes, glasses and spectacles, sunglasses, corrective glasses and spectacles, protective glasses and spectacles, contact lenses, lenses for glasses and spectacles, frames for glasses and spectacles, corrective frames, cases for glasses, sunglasses and spectacles, cords, ribbons, chains, and devices for retaining glasses, sunglasses and spectacles in position, clip on sunglasses, eyeglass cases, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords, eyeglass chains, eyeglass frames, eyeglass cords, eyeglasses, sunglass cords, sunglass frames, sunglass chains, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, semi-precious and precious stones, horological and other chronometric instruments, watches, clocks, jewellery and imitation jewellery, handbags, travel cases, luggage, holdalls, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, wallets, school satchels and briefcases key cases, briefcases, canes, card cases, leather shoulder bags, parasols, purses, pouches, rucksacks, sling bags, shopping bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, parasols, walking sticks, whips, harness and saddlery, toilet bags, backpacks, bum-bags, sports bags, casual bags, music cases, satchels, beauty cases, carriers for suits, for shirts and for dresses, tie cases, credit card cases and holders, leather belts, clothing, footwear, headgear, boots, shoes, slippers, sandals, trainers, socks and hosiery, hats, caps, berets, scarves, gloves, mittens, belts being articles of clothing, shirts, T-shirts, polo shirts, sports shirts, trousers, jeans, shorts, sports shorts, swimwear, underwear, lingerie, tracksuits, articles of outerwear, coats, jackets, ski jackets, waterproof and weatherproof jackets and coats, ski wear, suits, jumpers and cardigans, knitwear, leggings, neckties, pajamas, waistcoats, headbands and wristbands, menswear, womenswear, children’s wear, underclothing, clothing for men, women, children and infants, slacks, skirts, wraps, jerseys, blouses, dresses, sleepwear, robes, sweatshirts, bibs, stockings, earmuffs, ties, tuxedos, vests, kilts, shawls, blazers, headbands and wristbands and overalls; the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods from a general merchandise retail store or a general merchandise internet website particularly specializing in the marketing of the sale of goods and services of others; advertising and promotional services; providing information and advisory services relating to the aforesaid services
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.
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.
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@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.