To: | Yves Saint Laurent Parfums (dfinguerra-ducharme@pryorcashman.com) |
Subject: | U.S. Trademark Application Serial No. 90178587 - ROUGE VELOURS PATCHOULI - ROSE YVES - 20445.00125 |
Sent: | January 26, 2021 02:27:57 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90178587
Mark: ROUGE VELOURS PATCHOULI - ROSE YVES
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Correspondence Address:
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Applicant: Yves Saint Laurent Parfums
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Reference/Docket No. 20445.00125
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 26, 2021
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.
The wording “cleaning and fragrancing preparations” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 3:
Perfumed soaps; perfumes; eau de cologne; toilet waters; eau de parfum; personal deodorants; cleaning preparations; room fragrances; fragranced skin care preparations, namely, skin cleaners; scented body lotions and creams; essential oils
Disclaimer
The attached evidence from an online dictionary shows the wording “PATCHOULI” is defined as “A small southeast Asian shrub (Pogostemon cablin) in the mint family, having leaves that yield a fragrant oil used in the manufacture of perfumes.” American Heritage Dictionary of the English Language, (2021) at www.ahdictionary.com. See attachment “patchouli”. The term “ROSE” refers to “Any of numerous shrubs or vines of the genus Rosa, having prickly stems and pinnately compound leaves, widely cultivated for their showy, often fragrant flowers.” Id. See attachment “rose”. Thus, the wording merely describes applicant’s goods because they likely are scented with or have the scent of roses and the patchouli shrub.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PATCHOULI - ROSE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Translation
Name of Individual Inquiry
In this case, the mark appears to consist of or comprise the name of a particular famous individual who is deceased. See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03. Specifically, the mark includes the name “YVES SAINT LAURENT”.
To register a mark that consists of or comprises the name, portrait, and/or signature of a particular living individual, an applicant must provide a written consent personally signed by the named or shown individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
In this case, where it is unclear whether the name, portrait, and/or signature is that of a living individual, applicant must so clarify for the record. Accordingly, if the individual identified in the mark is in fact deceased, applicant should provide the following statement:
The individual identified in the mark is in fact deceased; accordingly, the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.
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.
Section 44 Applicants
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
How to respond. Click to file a response to this nonfinal Office action.
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.
/Karen Bracey/
Examining Attorney
Law Office 116
571-272-9132
karen.bracey@uspto.gov
RESPONSE GUIDANCE