While Monaco fights to prevent us from trademarking the name Monaco Intelligence Service, which we created and have been blogging under without objection for almost four years, it is fascinating to note that the U.S. Patent & Trademark Office (USPTO) suspended the Principality of Monaco's application to patent the name... Monaco.
This was partly because Club Monaco, a clothing retailer, had already applied for a trademark, which USPTO has now approved.
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S
TRADEMARK APPLICATION MARK: MONACO
CORRESPONDENT ADDRESS: Mark I. Peroff
Hiscock & Barclay LLP 7 Times Square New York NY 10036
APPLICANT: GOUVERNEMENT DE LA PRINCIPAUTE DE MONACO ETC.
CORRESPONDENT’S REFERENCE/DOCKET NO:
713662.30537 CORRESPONDENT E-MAIL ADDRESS:
trademarks@hblaw.com
*79094390*
GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp
SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 11/22/2011 INTERNATIONAL
REGISTRATION NO. 1069254
This Office action is in response to applicant’s communications filed on September 30 and October 3, 2011.
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq. No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.
LIKELIHOOD OF CONFUSION REFUSAL – CLASSES 9, 12, 14, 16, 18, 25, 38, 41 AND 43
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3555259, 3057802, 3171113, 3325822, 3349241, 1758138, 2655209, 3810208, 3743942, 3525396, 3339202, 3641709, 3339201, 2137573, 3339156, 3201633, 3201629, 2787768, 2505704, and 3031006. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The examining attorney has considered applicants arguments carefully but has found them unpersuasive. Accordingly, the refusal is continued and maintained.
Applicant indicates that is unsure whether the refusal is limited to the classes 9, 12, 14, 16, 18, 25, 38, 41 and 43. For clarification, the stated refusal refers to these stated classes only and does not bar registration in the International Classes 28, 35 and 39.
GEOGRAPHICALLY DESCRIPTIVENESS REFUSAL
Registration has been refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods and/or services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a). The examining attorney has considered applicants arguments carefully but has found them unpersuasive. Accordingly, the refusal is continued and maintained.
REQUIREMENT FOR INFORMATION
Applicant states that “[t]he goods which are the subject of the instant application are not manufactured, shipped from or have any other connection with the geographic location named in the mark. The services will not be provided in the geographic name in the mark.” The statement is, unfortunately, unacceptable because it is incomplete. The response does not indicate whether the identified services have any connection with the geographic place named in the mark. Accordingly, the requirement is continued and maintained.
.jpg)
