To: | LOUIS VUITTON MALLETIER (Weigell-Docket@fzlz.com) |
Subject: | U.S. Trademark Application Serial No. 90522421 - IMAGINATION - LVT 2102473 |
Sent: | September 21, 2021 07:52:09 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90522421
Mark: IMAGINATION
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Correspondence Address: FROSS ZELNICK LEHRMAN & ZISSU, P.C. 151 W. 42ND STREET, 17TH FLOOR
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Applicant: LOUIS VUITTON MALLETIER
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Reference/Docket No. LVT 2102473
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: September 21, 2021
How to respond. Click to file a response to this nonfinal Office action.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue raised below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
SUMMARY OF ISSUES that applicant must address:
· PRELIMINARY AMENDMENT ACCEPTED
· IDENTIFICATION OF GOODS
· MULTIPLE CLASS APPLICATION MATERIALS
· FOREIGN REGISTRATION MATERIALS
PRELIMINARY AMENDMENT
The signed application declaration submitted on 6/14/2021 is acceptable and has been entered into the application record.
The identification of goods is indefinite and must be clarified, as to the wording noted below. See TMEP §1402.01. Where possible the examining attorney has made suggestions for suitable alternative wording which may be adopted, if accurate. Applicant must reclassify the goods and/or services and follow the multiple class application procedures outlined herein, as needed.
bases for perfume; extracts of flowers – The nature of these goods must be more clearly explained. The nature of the base, such as vanillin, must be specified, and if the goods are used to manufacture perfumes they belong in class 1 and wording such as this is acceptable in class 1: vanillin for use as a base in the manufacture of perfumes. As to the extracts, if accurate, this may be amended to “extracts of flowers being perfumes” and “extracts of flowers being sold as a component of cosmetics”;
cosmetic preparations purposes for skin and lip care – It appears that some wording is missing from this clause. This may be corrected to “cosmetic preparations for skin care and lip care”;
cosmetic for the hands, face and body – correct “cosmetic” to “cosmetics”;
soaps – specify “toilet soaps, non-medicated soaps and bath soaps” in class 3; “medicated soaps” in class 5;
deodorants – specify “deodorants for personal use” in class 3; “room deodorants” in class 5.
For further 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 3 classes – international classes 1, 3 and 5; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
FOREIGN REGISTRATION MATERIALS
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, the 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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. 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), 806.03(h).
RESPONSE GUIDELINES
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.
/Nora Buchanan Will/
Examining Attorney
Law Office 116
phone 571-272-9135
nora.will@uspto.gov -
for informal email only
RESPONSE GUIDANCE