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. 79303586
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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. 1573920
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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
IDENTIFICATION OF GOODS AMENDMENT REQUIRED
Therefore, applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the goods.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL
CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of
the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 018: Leather and imitations of leather; trunks being luggage and suitcases; umbrellas and parasols;
whips, harness for horses and saddlery; clothing for pets; saddlery; key cases; vanity cases, not fitted; trunks being luggage; travelling
trunks; bags, namely, ______ {please specify, e.g., travelling bags}; slings for carrying infants; bags for sports; chain mesh purses;
purses; handbags; leather travelling bag sets [leatherware]; briefcases; school bags; coverings of skins
in the nature of synthetic and artificial fur [furs]; horse blankets; imitation of leather, namely, moleskin
[imitation of leather]; umbrella covers; leather leashes; imitation leather; suitcase handles; pouch baby carriers; parasols; umbrellas; animal skins, and hides; notecases, namely, credit card cases [notecases]; music cases;
pocket wallets; leather and imitation leathers for use as furniture coverings of leather; beach bags; travelling bags; wheeled shopping bags;
leather or leather-board boxes; hat boxes of leather; valises; attaché cases; leather briefcases; garment bags for travel; rucksacks
International Class 025: Mufflers, namely, neck tube scarves [mufflers]; clothing, namely, ear muffs [clothing]; clothing layettes [clothing]; corselets; corsets
being clothing, stockings; coats; shirts; suits; beach clothes, namely, ______ {please specify, e.g., beach
cover-ups}; masquerade costumes; neckties; ascots; bathing caps; shower caps; clothing, namely, headbands [clothing]; pocket squares; scarves; fittings of metal for footwear in the nature of heelpieces; ready-made linings being parts of
clothing [parts of clothing]; clothing, namely, gabardines [clothing];
spats; clothing, namely, jackets [clothing]; fishing vests; garters; skirts; jumper dresses; clothing, namely,
aprons [clothing]; girdles; clothing, namely, gloves [clothing]; mittens; ski gloves; welts for footwear;
waterproof clothing, namely, ______ {please specify clothing articles, e.g., waterproof jackets and pants}; ready-made linings being parts of clothing; paper clothing, namely, paper hats for use as clothing items; Clothing being
knitwear, namely, ______{please indicate specific knitted clothing items, e.g., shirts, dresses, sweaters} [clothing]; jerseys [clothing]; leggings resembling trousers [trousers]; liveries; hosiery; swimsuits; sweaters;
clothing, namely, muffs [clothing]; maniples; pelerines; mantillas; sleep masks; miniskirts; miters, namely,
hats [hats]; pants; bathing trunks; waistcoats; clothing, namely, babies' pants [clothing]; trousers;
parkas; pelisses; furs being clothing [clothing]; shirt yokes; pyjamas; dressing gowns; cuffs; ponchos; athletic
sweaters; tips for footwear; stocking suspenders; sock suspenders; brassieres; heelpieces for footwear; heelpieces for stockings; sandals; bath sandals; saris; sarongs; shoes; esparto shoes or
sandals; bath sandals; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; slippers; deck shoes; shawls; scarves;
underpants; lace boots; wimples; topcoats; outer-clothing, namely, jackets; dress shields; trouser straps; petticoats; slips being
undergarments [undergarments]; shirt fronts; half-boots; boots; boots for sports; fur stoles; soles for footwear; inner soles; heels; pockets for clothing;
tee-shirts; togas; footwear uppers; turbans; wet suits for water-skiing; combinations [clothing article]; uniforms; clothing, namely, veils
[clothing]; visors being headwear [headwear]; berets; hats; headgear being
headwear; wooden shoes; clothing of imitations of leather, namely, belts made from imitation leather; clothing of leather, namely, _____
{please specify, e.g., leather belts}; motorists' clothing, namely, _____ {please specify, e.g., motorcycle
jackets}; cyclists' clothing, namely, _____ {please specify, e.g., cyclists' jerseys}; clothing for gymnastics,
namely, _____ {please specify, e.g., leotards}; sportswear, namely, _____ {please specify, e.g., sports
jerseys}; riding clothes, namely, _____ {please specify, e.g., riding jackets and boots}; dresses; bath robes; clothing, namely, belts (clothing); gilets; cabans; Bermuda shorts; mufflers as neck scarves
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.
The following description is suggested, if accurate: The mark consists of a shield divided into four squares with the upper left square shaded with a tree in the center, and to its right and immediately below the upper right and left lower squares each have a shaded five point star, and the lower right square is shaded and has an image of a bird. Immediately below the shield appears a shaded wreath design.
APPLICANT’S EMAIL ADDRESS REQUIRED
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
U.S. COUNSEL RULE REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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).
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Sahar Nasserghodsi/
Sahar Nasserghodsi
Examining Attorney
Law Office 115
(571)272-9192
Sahar.Nasserghodsi@uspto.gov
RESPONSE GUIDANCE