Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85973192  (Stylized and/or with Design, see http://uspto.report/TM/85973192/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

ORNAMENTATION REFUSAL:

The Examiner has refused registration, contending that the Applicant’s mark as used on the specimen of record is merely decorative or ornamental. Applicant respectfully submits that this refusal was issued in error.

The instant Application claims a Section 1(b) intent to use basis and there is no specimen presently of record in this Application.  “Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by a specimen.” See TMEP 1202.03(e).  There is no specimen of record from which the Examiner could conclude that the mark is merely ornamental. 

As such the Applicant respectfully requests that the ornamentation refusal be removed.

MARK IS NOT INHERENTLY DISTINCTIVE REFUSAL:

The Examiner has also refused registration on the basis that the mark is not inherently distinctive because the applied for mark depicts a repetitive pattern used on some or all of the surfaces of a good or a good’s packaging.

This lack of inherent distinctiveness refusal is based upon the Applicant’s use of the mark.  However, the instant intent to use Application contains no record of Applicant's use of the mark on the goods.  Thus, the reference to “a repeated design or pattern used on some or all of the surfaces of a product or product packaging,” (emphasis added) is outside the context of this Application. No determination as to the lack of inherent distinctiveness can be made with respect to the Applicant’s use of the mark on packing or the goods because there is no specimen of record from which such a conclusion may be drawn.

As such the Applicant respectfully requests that the refusal on the basis that the mark is not inherently distinctive be removed.

CONCLUSION:

Applicant submits that the refusals are inconsistent with the record, and should, therefore, by withdrawn.  Applicant respectfully requests that the foregoing Application, as amended, be published in the Official Gazette of the U.S. Patent and Trademark Office.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, correcting lenses (optics), spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, PDAs (personal digital assistants) and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, PDAs (personal digital assistants) and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing equipment, computers; computer software; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; scientific apparatus and instruments (not for medical purposes), nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; cases adapted for photographic and cinematographic apparatus
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, correcting lenses (optics), spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; optical apparatus and instruments, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, PDAs (personal digital assistants) and MP3 players; telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, PDAs (personal digital assistants) and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing equipment, computers; computer software; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; scientific apparatus and instruments (not for medical purposes), nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; scientific apparatus and instruments not for medical purposes, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking, supervising, life-saving and teaching apparatus and instruments; cases adapted for photographic and cinematographic apparatusClass 009 for Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing equipment, computers; computer software; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; scientific apparatus and instruments not for medical purposes, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking, supervising, life-saving and teaching apparatus and instruments; cases adapted for photographic and cinematographic apparatus
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; artists' materials; paint brushes; catalogs, newspapers, magazines, leaflets and manuals (handbooks), books, magazines (periodicals); periodicals; pamphlets; printed publications; photographs (printed); stationery; posters; stickers (stationery); paper and cardboard; wrappers of cardboard or paper; bags (envelopes, pouches) of paper for packaging; signboards of paper or cardboard, note books; plastic materials for packaging namely: bags, small bags, pouches; subscription cards (non-magnetic), fountain pens; pencils: pencil holders, writing instruments, writing cases (sets) their fitting cases, notepads, writing pads, business cards, chequebooks, diaries, covers for diaries (stationery), postcards, engravings, lithographs, portraits, embroidery designs (patterns), patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; hat boxes of cardboard; paper knives (cutters) (office requisites), envelopes (stationery), labels, not of textile; writing paper; bookmarkers; Passport holders; holders for checkbooks (chequebooks); indexes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; artists' materials; paint brushes; catalogs, newspapers, magazines, leaflets and manuals (handbooks), books, magazines (periodicals); catalogs, newspapers, magazines, handbooks, leaflets and manuals , books, magazines; periodicals; pamphlets; printed publications; photographs (printed); printed photographs; stationery; posters; stickers (stationery); stationary stickers; paper and cardboard; wrappers of cardboard or paper; bags (envelopes, pouches) of paper for packaging; bags, envelopes and pouches of paper for packaging; signboards of paper or cardboard, note books; plastic materials for packaging namely: bags, small bags, pouches; subscription cards (non-magnetic), fountain pens; non-magnetic subscription cards, fountain pens; pencils: pencil holders, writing instruments, writing cases (sets) their fitting cases, notepads, writing pads, business cards, chequebooks, diaries, covers for diaries (stationery), postcards, engravings, lithographs, portraits, embroidery designs (patterns), patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; pencils; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, chequebooks, diaries, stationary covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; paper knives (cutters) (office requisites), envelopes (stationery), labels, not of textile; hat boxes of cardboard; paper knives and cutters for office uses, stationery envelopes, labels, not of textile; writing paper; bookmarkers; holders for checkbooks (chequebooks); Passport holders; holders for checkbooks; indexesClass 016 for Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; artists' materials; paint brushes; catalogs, newspapers, magazines, handbooks, leaflets and manuals , books, magazines; periodicals; pamphlets; printed publications; printed photographs; stationery; posters; stationary stickers; paper and cardboard; wrappers of cardboard or paper; bags, envelopes and pouches of paper for packaging; signboards of paper or cardboard, note books; plastic materials for packaging namely: bags, small bags, pouches; non-magnetic subscription cards, fountain pens; pencils; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, chequebooks, diaries, stationary covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; hat boxes of cardboard; paper knives and cutters for office uses, stationery envelopes, labels, not of textile; writing paper; bookmarkers; Passport holders; holders for checkbooks; indexes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases (notecases), briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); umbrellas, parasols, walking sticks; harness for animals, whips, saddlery
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases (notecases), briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); umbrellas, parasols, walking sticks; harness for animals, whips, saddleryClass 018 for Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); umbrellas, parasols, walking sticks; harness for animals, whips, saddlery
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a pattern consisting of a multitude of YSL monograms positioned in a stylized manner.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_711254634-160722259_._P716_executed_Declaration_in_Support_of_Application_140411.PDF
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Michele Buttazzoni
Signatory's Position: Managing Director

Signatory's Name: Ricardo Pasero
Signatory's Position: CFO

Response Signature
Signature: /Oren Gelber/     Date: 04/11/2014
Signatory's Name: Oren Gelber
Signatory's Position: Associate Attorney, Collen IP, Intellectual Property Law, P.C., New York State Bar Member

Signatory's Phone Number: (914) 941-5668

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85973192
Internet Transmission Date: Fri Apr 11 17:10:18 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140411171018320
761-85973192-500e4ad4d1cb26b10e1b2ca9a50
c292f4ac7896e140345146d9c31d86ab339fa03c
-N/A-N/A-20140411160722259492