NOTE TO THE FILE
SERIAL NUMBER: 79287218
DATE: 03/12/2021
NAME: kmorris
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Allison S. Ricketts <aricketts@fzlz.com>
Sent: Friday, March 12, 2021 1:42 PM
To: Morris, Kristina <Kristina.Morris@USPTO.GOV>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: Trademark Application Serial No. 79287218 (Your docket no. ELLE 2009639)
Dear Ms. Morris:
The Voluntary Amendment Form with the claim of ownership was filed with the USPTO today. The filing receipt is attached.
Regards,
Allison
Allison Strickland Ricketts | Partner
Fross Zelnick Lehrman & Zissu, P.C.
151 West 42nd St., 17th Fl. | New York, NY 10036
T 212.813.5967 | M 917.622.4355
Our office is currently working remotely, and governmental restrictions in response to COVID-19 have limited access to our building and mailroom. To ensure continuity of service, we kindly request that all correspondence and payments be sent only electronically. If there are documents you must send by mail or courier service, please make specific arrangements with someone on your client team before doing so. Thank you.
From: Morris, Kristina [mailto:Kristina.Morris@USPTO.GOV]
Sent: Friday, March 12, 2021 11:37 AM
To: Allison S. Ricketts <aricketts@fzlz.com>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: Trademark Application Serial No. 79287218 (Your docket no. ELLE 2009639)
Good morning Allison,
Thank you for your email. I will issue the examiner’s amendment with the changes below.
Have you submitted the Voluntary Amendment Form with the claim of ownership of the cited Registration Nos. 1213859, 1266977, 1055007, and 1247607 supported by a signed declaration? It doesn’t appear in the record yet, but it can take a day or two to show up.
Best regards,
Kristina
Kristina Morris
Examining Attorney | Law Office 116
Phone: (571) 272-5895
Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §709.05.
From: Allison S. Ricketts <aricketts@fzlz.com>
Sent: Friday, March 12, 2021 11:30 AM
To: Morris, Kristina <Kristina.Morris@USPTO.GOV>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: Trademark Application Serial No. 79287218 (Your docket no. ELLE 2009639)
Dear Ms. Morris:
Applicant requests to amend the application as follows:
“Cosmetics; non-medicated soaps; essential oils; perfumes; deodorants for personal use; anti-perspirants; non-medicated hair preparations; shampoos; hair conditioners; toilet water; body wash and shower gel; body sprays; body moisturisers; eau de parfum; cologne; cosmetic sun-tanning preparations; sun screen; non-medicated hand washes; lip balms; cosmetic shower and bath preparations; bath oils; cosmetic bath salts; talcum powder; skin moisturisers; essential oils for use in aromatherapy; nail care preparations; depilatory preparations and substances; dentifrices; breath freshening preparations for personal hygiene; polishes for preserving footwear, leather and suede; cleaning and polishing preparations for footwear; cleaning, conditioning and polishing preparations for use in the care of footwear, namely, shoe wax; detergent for cleaning shoes; pastes for cleaning shoes, namely, shoe polishes and creams; footwear creams, polishes and sprays having waterproof properties for protection from the rain; shoe creams, polishes and wax” in Class 3
“Sports goggles; ski goggles; ski glasses; ski helmets; sports eyewear; sunglasses; spectacles; protective eyeglasses and spectacles; eyewear; optical glasses; protective visors for helmets; visors for protective helmets; anti-glare visors for helmets; optical lens blanks for glasses and spectacles; frames for eyeglasses, sunglasses and spectacles; cases for eyeglasses, sunglasses and spectacles; cords, ribbons and chains for retaining eyeglasses, sunglasses and spectacles in position; clip on sunglasses; articles of clothing for protection against accident or injury; sports helmets; protective helmets; head guards for sports; mouth guards for sports; apparatus for recording, transmission or reproduction of sound or images or other data; blank magnetic data carriers; blank recordable optical discs; blank compact discs; downloadable computer application software for use with smart phones and mobile devices, namely, software for use with smart phones and mobile devices, namely, software for measuring speed, distance, time, heart rate and cadence in relation to fitness tracking and sports performance in the fields of sports and fitness; GPS tracking device to be worn on the wrist of an athlete during sporting events used to track athletic performance, goals and statistics; electronic sports training simulators; wearable activity trackers; smart watches; wrist-mounted smartphones that communicate data to mobile phones and other electronic devices; global positioning system (GPS) apparatus; pedometers; electronic heart rate and electronic respiratory monitors, non-medical; MP3 players; mobile phone covers and cases; bags and cases adapted or shaped for holding or carrying digital music players; bags and cases adapted or shaped for holding or carrying tablet computers, and electronic reading devices; headphones; earphones; audio speakers; chargers for electric batteries; structural parts and fittings for all the aforesaid goods” in Class 9
“Bags, namely, messenger bags, cross-body bags, backpacks, handbags, duffel bags, gym bags, pouches, namely, pouches of leather and pouches of textile, barrel bags, and tote bags; bags and holdalls for sports clothing; carrying cases; satchels; holdalls; sports bags; athletic bags; flight bags; school bags; rucksacks; trunks being luggage; travelling bags; handbags; clutch bags; cosmetic and toilet bags sold empty; purses; wallets; leather shoulder belts; umbrellas and parasols; walking sticks” in Class 18
“Towels; facecloths; flannel; fabrics for textile use; fabrics for the manufacture of clothing and sportswear; bed linen; bed sheets; pillow cases; pillow covers; duvet covers; cushion covers; bed covers; bed blankets; lap rugs; sleeping bags; curtains; textiles fabrics for use in making clothing” in Class 24
“Balls for sports; bags and cases specially adapted for sporting equipment; fitted protective covers specially adapted for sports equipment, namely, tennis rackets, badminton rackets and golf clubs;
apparatus and equipment for playing tennis;apparatus and equipment for skiing, namely, skis, ski poles, ski brakes, ski edges and ski bindings; protective padding and supports for playing hockey;gloves for ball sports; snow boards; snow skis; apparatus and equipment for physical exercise, namely, jump ropes and weights; structural parts for all of the aforesaid goods” in Class 28
The text in red should be deleted from the application. Classes 25 and 35 should remain unchanged.
Thank you for your assistance in this matter.
Regards,
/Allison Strickland Ricketts/
Allison Strickland Ricketts | Partner
Fross Zelnick Lehrman & Zissu, P.C.
151 West 42nd St., 17th Fl. | New York, NY 10036
T 212.813.5967 | M 917.622.4355
Our office is currently working remotely, and governmental restrictions in response to COVID-19 have limited access to our building and mailroom. To ensure continuity of service, we kindly request that all correspondence and payments be sent only electronically. If there are documents you must send by mail or courier service, please make specific arrangements with someone on your client team before doing so. Thank you.
From: Allison S. Ricketts
Sent: Thursday, March 11, 2021 5:46 PM
To: 'Morris, Kristina' <Kristina.Morris@USPTO.GOV>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: Trademark Application Serial No. 79287218 (Your docket no. ELLE 2009639) -
Dear Ms. Morris:
We will send you responses to these remaining issues tomorrow. Thank you.
Regards,
Allison
Allison Strickland Ricketts | aricketts@fzlz.com
Fross Zelnick | 212.813.5967 | M 917.622.4355
Our office is currently working remotely, and governmental restrictions in response to COVID-19 have limited access to our building and mailroom. To ensure continuity of service, we kindly request that all correspondence and payments be sent only electronically. If there are documents you must send by mail or courier service, please make specific arrangements with someone on your client team before doing so. Thank you.
From: Morris, Kristina [mailto:Kristina.Morris@USPTO.GOV]
Sent: Thursday, March 04, 2021 12:09 PM
To: Ricketts Docket
Subject: Trademark Application Serial No. 79287218 (Your docket no. ELLE 2009639) -
Good morning Ms. Ricketts,
I have reviewed your response in the above-referenced application.
With regard to the claim of ownership of the prior registrations, the claim of ownership must be supported by a signed declaration. Because the response does not include a signed declaration, I cannot withdraw the refusal based on ownership of the registrations. If you would like to re-submit the claim of ownership of the four registrations with the declaration, you may do so using the Voluntary Amendment Form rather than the response to office form since the response form will not allow you to file a response after the deadline for responding to the Office action has passed.
Additionally, there are a few items in the identification of goods and services that must be clarified. If you file the voluntary amendment form, you can either include these amendments in the form submission or authorize me to enter them via examiner’s amendment once you have filed the voluntary amendment form.
In Class 3, you must clarify the nature of the hair preparations because they encompass medicated hair preparations in Class 5.
In Class 9, you must clarify the nature of the protective visors.
In Class 18, the wording “body bags” is unacceptable because it identifies goods in Class 22. You must also clarify the nature of pouch bags and indicate that the cosmetic and toilet bags are sold empty, if accurate.
In Class 24, you must clarify the wording “flannels” because in its plural form, it is unclear whether the wording identifies flannel fabric or goods made from flannel.
In Class 28, you must clarify the type of sporting articles in the wording “bags and cases specially adapted for sporting articles,” the type of apparatus and equipment for playing tennis, the balls sports the protective padding and gloves are used for and the nature of the supports for ball sports.
The following wording is suggested, if accurate:
“Cosmetics; non-medicated soaps; essential oils; perfumes; deodorants for personal use; anti-perspirants; non-medicated hair preparations; shampoos; hair conditioners; toilet water; body wash and shower gel; body sprays; body moisturisers; eau de parfum; cologne; cosmetic sun-tanning preparations; sun screen; non-medicated hand washes; lip balms; cosmetic shower and bath preparations; bath oils; cosmetic bath salts; talcum powder; skin moisturisers; essential oils for use in aromatherapy; nail care preparations; depilatory preparations and substances; dentifrices; breath freshening preparations for personal hygiene; polishes for preserving footwear, leather and suede; cleaning and polishing preparations for footwear; cleaning, conditioning and polishing preparations for use in the care of footwear, namely, shoe wax; detergent for cleaning shoes; pastes for cleaning shoes, namely, shoe polishes and creams; footwear creams, polishes and sprays having waterproof properties for protection from the rain; shoe creams, polishes and wax” in Class 3
“Sports goggles; ski goggles; ski glasses; ski helmets; sports eyewear; sunglasses; spectacles; protective eyeglasses and spectacles; eyewear; optical glasses; protective visors for helmets; visors for protective helmets; anti-glare visors for helmets; optical lens blanks for glasses and spectacles; frames for eyeglasses, sunglasses and spectacles; cases for eyeglasses, sunglasses and spectacles; cords, ribbons and chains for retaining eyeglasses, sunglasses and spectacles in position; clip on sunglasses; articles of clothing for protection against accident or injury; sports helmets; protective helmets; head guards for sports; mouth guards for sports; apparatus for recording, transmission or reproduction of sound or images or other data; blank magnetic data carriers; blank recordable optical discs; blank compact discs; downloadable computer application software for use with smart phones and mobile devices, namely, software for use with smart phones and mobile devices, namely, software for measuring speed, distance, time, heart rate and cadence in relation to fitness tracking and sports performance in the fields of sports and fitness; GPS tracking device to be worn on the wrist of an athlete during sporting events used to track athletic performance, goals and statistics; electronic sports training simulators; wearable activity trackers; smart watches; wrist-mounted smartphones that communicate data to mobile phones and other electronic devices; global positioning system (GPS) apparatus; pedometers; electronic heart rate and electronic respiratory monitors, non-medical; MP3 players; mobile phone covers and cases; bags and cases adapted or shaped for holding or carrying digital music players; bags and cases adapted or shaped for holding or carrying tablet computers, and electronic reading devices; headphones; earphones; audio speakers; chargers for electric batteries; structural parts and fittings for all the aforesaid goods” in Class 9
“Bags, namely, messenger bags, crossbody bags, backpacks, handbags, duffel bags, gym bags, pouches of leather, pouches of textile, barrel bags, and tote bags; bags and holdalls for sports clothing; carrying cases; satchels; holdalls; sports bags; athletic bags; flight bags; school bags; rucksacks; trunks being luggage; travelling bags; handbags; clutch bags; cosmetic and toilet bags sold empty; purses; wallets; leather shoulder belts; umbrellas and parasols; walking sticks” in Class 18
“Towels; facecloths; flannel; fabrics for textile use; fabrics for the manufacture of clothing and sportswear; bed linen; bed sheets; pillow cases; pillow covers; duvet covers; cushion covers; bed covers; bed blankets; lap rugs; sleeping bags; curtains; textiles fabrics for use in making clothing” in Class 24
“Balls for sports; bags and cases specially adapted for sporting equipment; fitted protective covers specially adapted for sports equipment, namely, tennis rackets, badminton rackets and golf clubs; apparatus and equipment for playing tennis, namely, tennis rackets, tennis balls, and tennis nets; apparatus and equipment for skiing, namely, skis, ski poles, ski brakes, ski edges and ski bindings; protective padding and supports for ball sports, namely, protective padding for soccer, football, and baseball and athletic wrist and joint supports; gloves for football, baseball, and soccer; snow boards; snow skis; apparatus and equipment for physical exercise, namely, jump ropes and weights; structural parts for all of the aforesaid goods” in Class 28
The identification of goods and services in Classes 25 and 35 is acceptable as amended. The remaining issues in the Office action have been resolved.
I understand that there are quite a few suggested changes and that the applicant is located in Italy. If you would prefer that I issue a final Office action for the section 2(d) refusal and requirement for clarification of the identification of goods, I would be happy to do so. I will need to take action on this application by next Wednesday March 10.
Best regards,
Kristina Morris
Examining Attorney | Law Office 116
Phone: (571) 272-5895
Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §709.05.
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