Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

(2) Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. See TMEP §§602.03, 712.03.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

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, 2.65(a); TMEP §§711, 718.03.

Search of the Records of the U.S. Patent & Trademark Office

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Informalities

1. Identification and/or Classification of Goods/Services

The identification of goods/services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods/services. If there is no common commercial or generic name, applicant must describe the products/services and intended consumer(s) as well as its main purpose(s) and intended use(s).

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966).

Some of the goods are indefinite and must be clarified. Moreover, some of the goods could be classified in classes other than the classes in which they are currently classified. Reclassification is impermissible in a Madrid application under Section 66(a).

Applicant may adopt the following identification of goods/services, if accurate. See TMEP §1402.01. The suggested revisions are highlighted in capital letters.

“Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products EXCLUDING ICE CREAM, ICE MILK AND FROZEN YOGURT; edible oils and fats,” in International Class 29.

“Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour; preparations made from cereals, NAMELY, [LIST EACH ITEM BY ITS COMMON COMMERCIAL NAME]; bread; pastry; confectionery [SPECIFY TYPE OF CONFECTIONERY, E.G., FROZEN CONFECTIONERY, CONFECTIONERY CHIPS FOR BAKING, ETC.]; ices; honey, treacle; yeast, baking-powder; salt; mustard; vinegar; sauces; condiments, namely, [SPECIFY EACH OF THE GOODS IN CLASS 30]; spices; ice,” in International Class 30.

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services. Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date. TMEP §1402.14. However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14.

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

2. Requirement for a Translation

Applicant must submit an English translation of all foreign wording in the mark. TMEP §809; see 37 C.F.R. §§2.32(a), 2.61(b). In the present case, the wording “I CALDI SURGELATI RISPO”, or any variation or part thereof, may require translation. See the enclosed printouts from foreign-language dictionaries.

The following translation statement is suggested: “The English translation of [SPECIFY THE WORDING THAT REQUIRES TRANSLATION] in the mark is ‘[LIST THE ENGLISH TRANSLATION OF “I CALDI SURGELATI RISPO”, OR ANY VARIATION OR PART THEREOF].’” TMEP §809.02.

If the wording “I CALDI SURGELATI RISPO”, or any variation or part thereof, has no meaning in English, the applicant must state so for the record.

Responding to Office Action

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

/Michael A. Wiener/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-8836

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.