United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79292216
Mark: LORO PIANA
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Correspondence Address: c/o Barzanò & Zanardo Milano S.p.A. |
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Applicant: LORO PIANA S.p.A.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1546962
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SEARCH OF USPTO DATABASE OF MARKS
Summary of Issues Applicant Must Address
NAME OF LIVING INDIVIDUAL
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.”
(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, Loro Piana, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage.
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.
IDENTIFICATION REQUIRES AMENDMENT
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
The following is suggested if accurate:
CLASS 25: Footwear; shoes; boots; deck shoes; sandals; casual shoes; boots for sports; beach shoes; running shoes; rubbers being footwear; espadrilles; gymnastic shoes; clogs; mules, leather shoes; stockings; berets; boas being necklets; berets (headgear); hosiery;
half-boots; suspenders; lace boots; neck scarves and mufflers as neck scarves; neck scarves [mufflers]; neck scarves [mufflers] (duplicative please
delete); belts [clothing]; shawls; sweaters; sweaters; socks; boot uppers; shirts; short-sleeve shirts; hats; furs being clothing; suits;
ready-to-wear clothing, namely, {specify the clothing items “shirts” “suits” “pants”}; ear muffs [clothing]; neckties; trousers; gloves [clothing]; scarves; sashes for wear;
knitwear, namely, {specify the knitted clothing “sweaters”}; fur stoles; waistcoats; coats; rainproof clothing, namely, {specify the clothing items “shirts”
“suits” “pants”}; skirts; layettes being clothing; muffs [clothing]; mittens; gowns; topcoats; stuff jackets [clothing]; stuff jackets [clothing]; jackets [clothing]; heels;
headbands [clothing]; parkas; bandanas [neckerchiefs]; clothing of imitations of leather namely, {specify the clothing items “shirts” “suits” “pants”}; leather
clothing namely, {specify the clothing items “shirts” “suits” “pants”}; tee-shirts; turbans; money belts; pocket squares; sleep masks; skorts; ponchos;
leggings; pinafore dresses; ankle boots; embroidered clothing namely, {specify the clothing items “shirts” “suits” “pants”}; headwear;
gloves
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.
MARK DESCRIPTION REQUIRED
The following description / format for description is suggested, if accurate: The mark consists of the stylized wording “LORO PIANA” to the right of a design consisting of a laurel wreath with a shield centered within which is separated into four quadrants containing from (top left to bottom right) a {specify the image on the top left}, followed by two five pointed stars, and finally a {specify image on the bottom right}
US COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@uspto.gov
RESPONSE GUIDANCE