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. 79294271
Mark: MONCLER
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Correspondence Address:
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Applicant: MONCLER 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. 1551712
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).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
· Identification of Goods
· Description of the Mark
· U.S.-Licensed Attorney
SEARCH RESULTS
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
Applicant should keep the following in mind when crafting the identification of goods and services.
The examining attorney accepts the following in the identification of goods in class 3: Shower gel; bath oils not for medical purposes; bath pearls; bath salts, not for medical purposes; skin cleansers; shaving lotions; shaving cream; shaving soap; aftershave lotions; skin lotions; hair shampoos; perfumes; toilet water; deodorants for personal use, eye shadows; cosmetic pencils; make-up foundations; make-up powder; talcum powder, for toilet use; rouges; lipsticks; mascaras; sun screen preparations; nail varnish for cosmetic purposes; nail polish; make-up removing preparations; beauty masks; facial scrubs; body lotions; skin creams; cosmetic preparations for slimming purposes; massage oil; hair sprays; hair lotions; hair colourants; hair conditioners; hair moisturizers; hair gel; hair mousse; depilatories; essential oils for personal use; adhesives for affixing false hair, non-medicated toiletries; non-medicated dentifrices; perfumery; eau de toilette and eau de Cologne; deodorants for human beings or for animals; incense; joss sticks; air fragrancing preparations; sachets for perfuming linen; air fragrance reed diffusers; scented room sprays; fragrances, namely, potpourris, cosmetics; make-up; cleansing milk for toilet purposes; micellar water; cosmetic soap; non-medicated soap; mouthwashes, not for medical purposes
The following is unacceptable as indefinite in class 3: bubble bath for cosmetic; soaps for body care; skin cleansers; perfumes, namely, extracts of flowers.
Applicant’s wording is in BOLD and the examining attorney’s suggestions are underlined.
BUBBLE BATH FOR COSMETIC;
Applicant must explain what it means by “for cosmetic.” Applicant may adopt the following in class 3: bubble bath for cosmetic use.
SOAPS FOR BODY CARE;
Applicant must indicate the goods are non-medicated. Applicant may adopt the following in class 3: non-medicated soaps for body care.
SKIN CLEANSERS;
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
PERFUMES, NAMELY, EXTRACTS OF FLOWERS
Applicant may adopt the following in class 3: extracts of flowers being perfumes.
DESCRIPTION OF THE MARK
Applicant’s Reg. No. 5220625 (see attached) includes the following description: The mark consists of a stylized bell that contains the wording "MONCLER" underneath a stylized rooster, wherein the stylized letter "M" represents a part of the rooster's body.
As the drawing in the instant applicant has the same design of the rooster and letter “M”, applicant should provide a description of that design as the letter “M”.
The following description is suggested, if accurate: The mark consists of the outline of a stylized bell that contains the stylized wording “MONCLER” underneath a stylized rooster, wherein the stylized letter “M” represents a part of the rooster’s body.
U.S.-Licensed Attorney
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.
Kim Saito
/Kim Saito/
Examining Attorney LO 124
571.272.9214
kim.saito@uspto.gov
RESPONSE GUIDANCE