TM ASSIGNMENT REGESTRATION NUMBER {CONT}
`
`73665340
`SERIAL NUMBER:
`REGISTRATION NUMBER:
`1512402
`REEL:
`FRAME:
`
`:
`DATE FILED
`DATE REGISTERED:
`DATE RECORDED
`1
`
`O6/O8/1987
`11/15/1988
`
`NUMBER CF PAGES:
`MARK:
`BOSS
`
`NO DEED RECORD AVAILABLE
`
`**LAST PAGE**. ENTER ‘P’ HERE TO PAGE BACKWARDS:
`FOR A NEW SEARCH ENTER TRANSACTION CODE AND SEARCH
`STRATEGY HERE:
`
`04/07/94 07:14
`
`4__z, ..,u_ ...-__;;.Q4_._..r_ .4.—..
`
`..
`
`

`
`Form PTO -18-t
`(Rev. 12-82)
`
`'.
`
`-
`
`"
`
`PATENT AND TRADEMARK osmc;
`u.s. DEPARTMENT OF CDMHERC:
`
`Pun No. %
`
`BRIEF OF INTER PARTES CASE
`
`5
`
`SERIAL No__________________________________....
`
`APPLICANT __-__-__--___-__._..-__.____.__..__-_-..-..---.._--..--..--..........-————-----—--——--—-—-—---—
`
`Rzcrsnanpn No. --_[.
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`
`—-------
`
`
`
`DECISION
`
`Surzavtscmv Emumzx ___________; ____________________________ --
`
`Tmoammx Tnuu. AND APPLAL BOARD _____.
`
`__ __._i'_\_j_\X,\J%.b{._-
`
`

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`
`UNITED STATESBEPARTMENT OF COMMERCE
`Patent and Trafi
`'rk Office
`ASSISTANT SECRE?,~r.—. AND COMMISSIONER
`OF PATENTS AND TRADEMARKS
`Vvamnmom DC.20231
`
`REGISTRATION NO.
`
`1512402
`
`SERIAL NO.
`
`.73/665340
`
`MARK: BOSS
`
`REGISTRANT: HUGO BOSS A.G.
`
`CORRESPONDENCE ADDRESS:
`-
`
`PATRICE MORGAN
`COUDERT BROTHERS
`I
`N'w'
`DC
`
`PAPER NO.
`MAILING DATE: 04/03/95
`
`Rlease furnish the following
`In all correspondence:
`d
`_
`d
`Y
`h
`b
`3 MZ”n'm"g°d"§e“Z'?t‘iTs"2cTf;E.°° 6‘
`Affidavit-Renewal Examiner‘s name.
`The address of all correspondence
`the words "Box 5".
`not contalnmg fees should include
`. Registration No.
`
`RECEIPT IS ACKNOWLEDGED OF THE SUBMITTED REQUEST UNDER:
`
`SECTION 8 OF THE TRADEMARK STATUTE AND 37 CFR SECS. 2.16l—2.166.
`
`YOUR REQUEST FULFILLS THE STATUTORY REQUIREMENTS AND HAS BEEN ACCEPTED.
`
`MARY E. BOWMAN
`AFFIDAVIT-RENEWAL EXAMINER
`TRADEMARK EXAMINING OPERATION
`(703) 308-9500 EXT. 36
`
`

`
`BOSS
`
`REGISTERED OWNER:
`
`Hugo Boss A.G.
`
`REGISTRATION NO.:
`
`1, 512, 402
`
`REGISTRATION DATE:
`
`November 15, 1988
`
`AFFIDAVIT UNDER SECTION 8
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`The undersigned, Jorg Viggo Mijller, declares that he is Chief Financial
`
`Officer of Hugo Boss A.G., a joint stock company of Germany, having a principal business
`
`address of Dieselstrasse 12, 7430 Metzingen, Germany; that he is authorized to make this
`
`declaration on behalf of said company, that said company is the owner of the above-
`
`identified registration issued on November 15, 1988 as shown by the records in the U.S.
`
`Patent and Trademark Office; that the mark shown therein is in use in commerce between
`X.
`
`Germany and the United States in connection with the goods recited in the registration
`KW
`
`certificate, that is for glasses - especially sun glasses - and parts thereof in International
`
`Class 9 as evidenced by the attached specimen; he declares further that all statements
`
`made herein are true and that these statements are made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code and that such willful false
`
`

`
`-2-
`
`statements made may jeopardize the validity of this document or the registration to which
`
`it relates.
`
`Hugo Boss A.G.
`
`

`
`MO D. 5163
`
`HOCKENHEIM
`
`H E
`
`?
`:'\
`
`'
`
`‘-2..
`
`_ 5163 48 salamander tortoise
`% 2100 brown ultasight
`
`5163'lDhruwntoI1nise
`
`516313ambertunoise
`
`§2660 green grad.
`
`E2660 green grad.
`
`

`
`MOD. 515
`
`DAYTONA
`
`P1
`.5
`—\
`
`515813 ambertormise
`E 265015 green
`2665 E green
`
`515811 bruwntortorse
`
`5|5812mbar:cu tortoise
`
`5X58 31 red-black lonoise
`
`5158 90 black mat
`
`32160 E brown grad.
`2165
`brown grad.
`
`% 2600 E green us
`2605
`green us
`
`2250 \§ grey grad
`2255
`grey grad
`
`2600 ‘i green us
`2605
`green us
`
`

`
`1627 I STREET, N.W.
`WASHINGTON, D.C. 20006
`TEL:202 775-5100 FAX: 202 775-1168
`
`’
`June 9, 1994
`
`-
`
`_
`
`S‘
`
`A
`
`:
`
`’
`
`.1
`
`»
`
`Commissioner of Patents and Trademarks
`
`Washington, D.C. 20231
`
`Attn: Post Registration
`
`NEWYORK
`PARS
`WASHWGTON
`LONDON
`BRUSSELS
`HONGKONG
`aNeAPoRE
`
`sAo PAULO
`SAN FRANCISCO
`BEIJING
`SYDNEY
`LOSANGELES
`SAN JOSE
`SHANGHN
`TOKYO
`MOSCOW
`BANGKOK
`JAKARTA
`
`HUGO BOSS, Registration No. 1,512,4Q2
`
`Dear Sir:
`
`Submitted herewith are an Affidavit Under Section 8, a specimen, and a
`....a....,\,_ma.“ _"--=-5..
`check for $~1QQ..fQLithe fee. Please deduct any additional fees from Deposit Account 03-
`3370.
`-»~..
`
`Patrice Morgan
`Legal Assistant
`
`

`
`5‘°‘""*“¢N* orcouunncz
`=-re.-er “.0
`7°ADCMAnIl on--gg
`
`PA!!! No. S!
`
`BRIEF OF INTER PARTES CASE
`
`Rzcxsrunou No. ___7......
`Rzcxsnaur -_thA .Q
`Anvtnsz Pu.-nv ----.@DQ.EbQ[\.-Sf.
`
`‘
`.
`Sunnwsonv Enumu ......................................... -- Dxrzn __________________ __
`
`‘I-I-LADEMAR-')(”:rRlAl:
`
`.BoA_—llD - - _'_
`
`REMARKS
`
`

`
`UNITED S'T*ATE"7 ‘,_El~-l_iRTMENT OFCOMMERCE
`Patent and Trademark" Office
`ASSISTANT SECRETARY AND COMMlSSlONER
`OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`NOTICE OF PUBLICATION UNDER 12(8)
`
`1. Serial No.:
`73/665,340
`
`2. Mark:
`BOSS
`
`3. Applicant:
`HUGO BOSS A.G.
`
`4. Publication Date:
`AUG. 23,
`I988
`
`The mark of the application above identified appears to be en titled to registration. The
`mark will,
`in accordance with Section 12(3) of the Trademark Act of 1946, be
`published in the Official Gazette on the date indicated above for the purpose of
`opposition by any person who believes he will be damaged by the registration of the
`mark.
`If no opposition is filed within the time specified by Section 13 of the Statute or
`by rules 2.101 and 2.102 of the Trademark Rules, the Commissioner of Patents and
`Trademarks may issue a certificate of registration.
`
`Copies of the trademark portion of the Official Gazette containing the publication of the
`mark may be obtained at
`$7.00 each for domestic orders, or at $8.75 each
`for foreign orders from:
`
`The Superintendent of Documents
`U.S. Government Printing Office
`Washington,D.C. 20402
`
`By direction of the Commissioner.
`
`5. Send correspondence to:
`
`LAWRENCE S. WICK
`
`LEYDIG, V0|T 6 MAYER
`SUITE l+600
`ONE IBM PLAZA
`
`CHICAGO,
`
`IL
`
`60611
`
`

`
`V
`.
`TRADEMARKS
`
`I
`
`5»-— -2’-‘
`(V
`
`I7”
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`"_re application of.
`go Boss A.G.
`
`Serial No. 665,340
`
`Mark: BOSS
`
`Filing Date: June 8, 1987
`
`saszsauaxasaxasasasasa
`
`Trademark Law Office IV
`
`Trademark Attorney
`Terry Ellen Holtzman
`
`Official Action Date:
`September 24, 1987
`To: Hon. Commissioner of Patents and Trademarks
`Box 5 - Trademarks
`
`Washington, D.C.
`
`20231
`
`INTERIM RESPONSE TO OFFICIAL ACTION
`
`Sir:
`
`This communication is an interim response to the Official
`
`Action dated September 24, 1987, regarding the above-identified
`
`application.
`
`‘A complete response will be made before the
`
`abandonment date of March 25, 1988.
`
`It appears that the files of Application Serial Nos.
`
`73/665,364 and 73/665,340 have become mixed in the records at the
`U.S. Patent and Trademark Office.
`
`According to our records and informal U.S. PTO receipt
`
`(copy
`
`enclosed), on June 18, 1987,
`
`the U.S. PTO assigned Serial
`
`No.665,340 to applicant's application for registration of the
`
`mark "BOSS"
`
`in International Class 9.
`
`Also according to our records and informal U.S. PTO receipt
`(copy enclosed), on June 18, 1987,
`the U.S. PTO also assigned
`
`Serial No. 665,364 to applicant's application for registration of
`
`the mark "HUGO BOSS"
`
`in International Class 9.
`
`31-315/lc
`
`

`
`TRADEMARKS
`
`It will be seen that these applications are not identical,
`
`but rather are for different marks, namely "BOSS" and "HUGO
`
`BOSS", although both are in International Class 9.
`
`The drawings
`
`of record should be for these two separate marks,
`
`"BOSS" and
`
`"HUGO BOSS," as are the documents relating to the respective
`
`German trademark registrations.
`
`The Official receipts (copies enclosed) as received by us
`
`some weeks ago erroneously showed both applications in
`
`International Class 9 as being for the trademark "BOSS" (copies
`
`enclosed).
`
`No other official receipt was received here for this
`
`applicant for any mark in International Class 9.
`Applicant suggests that this confusion may be eliminated
`
`simply by associating the "BOSS" application with the file of
`
`Serial No. 665,340; by associating the "HUGO BOSS" application
`
`with the file of Serial No. 665,364; and by correcting the mark
`
`as shown on the U.S. PTO mailing label for Serial No. 665,364 to
`
`read "HUGO BOSS."
`
`5
`
`When this situation is corrected, applicant believes that
`
`the following comments become moot:
`
`1. Application Serial No. 665,340, Official Action of
`
`September 24, 1987: page 2, paragraphs 3-5 regarding '
`
`informalities and duplicate applications; and,
`
`Application Serial No. 665,364; Qfficial Action of
`
`September 28, 1987, page 2, paragraphs 3-5 regarding
`
`informalities and duplicate applications.
`
`31-315/lc
`
`

`
`Applicant would appreciate being advised of the resolution
`
`of this confusion a sufficient period of time before the current
`
`abandonment dates.
`
`If the situation still is unresolved, applicant's attorney
`
`requests a telephone interview.
`
`Date: December 15, 1987
`-.
`
`Respectfu
`
`submitted,
`
`ence S. Wick
`ER
`LEYDIG, VOIT &
`One IBM Plaza - Suite 4600
`Chicago, Illinois
`60611
`(312) 822-9666
`
`Attorney for Applicant
`
`Attach: Copies of Filing Receipts and
`Official Actions in Serial Nos. 665,340 and 665,364
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service as first class mail
`in an
`envelope addressed to: Commissioner of atents and Trademarks,
`Washington, D.C.
`20231 on Decembe
`
`31-315/lc
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARKS
`
`5\
`\ e Application of
`Hugo Boss A.G.
`
`Serial No.:
`
`73/665,340
`
`Filed:
`
`June 8, 1987
`
`Mark:
`
`BOSS
`
`Law Office 4
`
`Trademark Attorney:
`Terry Ellen Holtzman
`
`\a~.z»4»4\_/xgxang
`
`Honorable Commissioner of Patents
`& Trademarks
`Box 5 - Trademarks
`
`Washington, D.C.
`
`20231
`
`RESPONSE
`
`Sir:
`
`This communication is made in response to the Official
`
`Action issued September 24, 1987.
`
`REMARKS
`
`With respect to informalities,
`
`the Examining Attorney noted
`
`that the mark as depicted on the drawing and in the foreign
`
`registration certificate did not match. However, as explained in
`
`the Interim Response filed on December 15, 1987, this application
`
`as filed, Serial No. 665,340, gig depict the mark as "BOSS" and
`
`corresponds to West German Reg. No. 1,056,140, which also depicts
`
`the mark as "BOSS".
`
`To the extent that any confusion of filing
`
`papers may have occurred with co—pending Serial No. 665,364,
`
`applicant respectfully requests that the respective papers for
`
`these files be associated as outlined in the Interim Response
`
`previously filed (see attached copy).
`
`The Examining Attorney has refused registration on the
`
`ground that applicant is not the owner of the mark.
`
`The
`
`9l-100/mjc
`
`_.l_
`
`

`
`Serial No. 665,340
`
`Examining Attorney states that the German certificate shows the
`
`owner thereof to be Hugo Boss Gmbh while the U.S. applicant is
`
`identified as Hugo Boss, A.G. However, if the Examining Attorney
`
`will note the bottom lines of the English translation of the
`
`foreign certificate, it is stated that the mark has been
`
`reregistered in the name of Hugo Boss Aktiengesellschaft, i.e.,
`
`Hugo Boss, A.G.
`
`The certificate reflects an assignment of the
`
`German registration.
`
`Such assignment occurred prior to the
`
`filing of the U.S. application and is expressly reflected on the
`
`German certificate. Applicant respectfully submits that it is
`
`clear on the face of the foreign certificate that Hugo Boss A.G.
`
`is the owner of the German registration, and was so at the time
`
`the U.S. application was filed.
`
`The Examining Attorney has also refused registration on the
`
`ground that the mark, as applied to the goods, so resembles U.S.
`
`Reg. No. 1,221,513, as to be likely to cause confusion or
`
`mistake, or to deceive.
`
`For reasons stated below, applicant
`
`respectfully traverses such finding.
`
`Applicant concedes that the marks in question are
`
`identical. However, it is quite clear that the respective goods
`
`are so distinctly different as to obviate any likelihood of
`
`confusion, even given identical marks.
`
`Registrant's products appear to be highly specialized safety
`
`equipment.
`
`They comprise "Industrial protective and safety
`
`equipment, namely, safety glasses and goggles, welding helmets,
`
`hard hats, ear plugs, and ear protectors for personal safety,
`
`face shields, and air purified and dust, mist and pesticides
`
`91-100/mjc
`
`

`
`Serial No. 665,340
`
`respiratory masks and air supplied respiratory apparatus".
`
`The
`
`applicant's goods comprise "Glasses, especially sunglasses and
`
`parts_thereof."
`
`It is well-settled that,
`
`in making a Section 2(d) analysis
`
`in an ex parte case,
`
`the Examining Attorney must compare the
`
`goods as actually identified in the respective registration and
`
`the application papers.
`
`In re Sawyer of Napa, Inc., 222 U.S.P.Q.
`
`923, 924 (TTAB 1983).
`
`It is also axiomatic that, absent
`
`restrictive language in the identification,
`
`the categorization of
`
`goods is construed broadly and presumed to encompass all the
`
`usual trade channels in which such goods travel.
`
`Id. Logic
`
`dictates that the opposite rule applies as well. Where the
`
`registrant's identification contains a specialized restriction,
`
`the interpretation of the goods is to be limited in accordance
`
`with such restriction.
`
`The registration herein clearly contains such a
`
`restriction.
`
`The goods comprise "Industrial protective and
`
`safety equipment." This is a highly specific limitation which
`
`narrowly defines the nature and trade channels of such goods.
`
`The glasses and goggles themselves are further limited by the
`
`term "safety".
`
`It is thus clear that these goods are safety
`
`glasses and goggles such as would be used for protection of the
`
`eyes in such industrial settings as factories and construction
`
`sites.
`
`The applicant's goods, by contrast, essentially comprise
`
`high fashion designer sunglasses.
`
`Such goods are luxury consumer
`
`items.
`
`They would be most likely used for sports and
`
`91-100/mjc
`
`

`
`Serial No. 665,340
`
`recreational wear, dress wear, and for such activities as
`
`driving. These uses are unquestionably very different from the
`
`typical uses for registrant's goods.
`
`It is also apparent that registrant's goods would be sold
`
`through specialized channels to specialized customers —— e.g., by
`
`sales agents and/or distributors directly to industrial customers
`
`such as the purchasing agents responsible for acquiring supplies
`
`for industrial sites.
`
`Such factors may legitimately be taken
`
`into account
`
`in a Section 2(d) analysis. Applicant's goods, by
`
`contrast, are consumer items sold through such channels as first-
`
`rate department stores, specialty shops and boutiques, and
`
`similar outlets. Distinct differences in trade channel outlets
`
`and types of purchases for goods are further factors which may
`
`lessen the likelihood of confusion, particularly where, as here,
`
`such dissimilarities are substantial. Amstar Corp. v. Domino's
`
`Pizzo, Inc., 6l5 F.2d 252, 262, 205 U.S.P.Q. 969, 977 (5th Cir.
`
`l980).
`
`Although the Examining Attorney has not challenged the
`
`identification of goods as it presently reads, applicant is
`
`willing, if necessary,
`
`to consider adopting proposed language
`
`from the Examining Attorney which would distinguish the
`
`applicant's goods from any industrial protective and safety
`
`equipment goods.
`
`For the reasons stated, applicant respectfully maintains
`
`that there are such differences in the goods that,
`
`notwithstanding use of the same marks thereon, it is not likely
`
`that prospective purchasers will likely be confused, misled or
`
`

`
`Serial No. 665,340
`
`deceived as to source. Applicant therefore respectfully requests
`
`that the Section 2(d) refusal be withdrawn.
`
`Assuming withdrawal of both statutory refusals, and the
`
`informalities raised in the official action having been resolved,
`
`applicant believes that the application is now in condition for
`
`publication, and a prompt allowance is solicited.
`
`Respectfully submitted,
`
`HUGO B A.G..
`
`Leydig, Voit & Mayer
`One IBM Plaza — Suite 4600
`Chicago, Illinois
`60611
`(312) 822-9666
`
`Attorneys for Applicant
`
`Date:
`
`91-100/mjc
`
`

`
`Serialyyo. 665,340
`
`ERTIFICATE OF MAILING BY "EXPRESS MAIL"
`
`" mailing label number
`
`B90525151
`
`/7454’?
`'”§//La/u»-.*/Ky 3—’Q\
`Deposit
`I hereby certify that this paper or fee is being deposited with
`the United States Postal Service "Express Mail Post Office To
`Addressee" service under 37 C.F.R. 1.10 on the date indicated
`above and is addressed to the Commissioner of Patents and
`Trademarks, Washington, D.C. 20231.
`(73wA fl%cmmaL C:b€p»/
`(Typed or printed name of person mailing paper or fee)
`
`e of person mailing paper or fee)
`
`91-100/mjc
`
`

`
`Q IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`/Y“)
`
`In re application of
`
`Hugo Boss A.G.
`
`Serial No. 665,340
`
`y//
`
`Mark: BOSS
`v//
`‘
`Filing Date: June 8, 1987 V//
`
`Official Action Date:
`
`September 24, 1987
`
`g/\.r&\a~e~_¢~.osa%4~a~a
`
`Trademark Law Office IV
`
`Trademark Attorney
`Terry Ellen Holtzman
`
`To: Hon. Commissioner of Patents and Trademarks
`Box 5 — Trademarks
`
`Washington, D.C.
`
`20231
`
`INTERIM RESPONSE TO OFFICIAL ACTION
`
`Sir:
`
`This communication is an interim response to the Official
`
`Action dated September 24, 1987, regarding the above-identified
`
`application.
`
`A complete response will be made before the
`
`abandonment date of March 25, 1988.
`
`It appears that the files of Application Serial Nos.
`
`73/665,364 and 73/665,340 have become mixed in the records at the
`U.S. Patent and Trademark Office.
`I
`
`According to our records and informal U.S. PTO receipt
`enclosed), on June 18, 1987,
`the U.S. PTO assigned Serial
`
`(copy
`
`No.665,340 to applicant's application for registration of the
`mark "BOSS" in International Class 9.
`
`Also according to our records and informal U.S. PTO receipt
`
`(copy enclosed), on June 18, 1987,
`
`the U.S. PTO also assigned
`
`Serial No. 665,364 to applicant's application for registration of
`
`the mark "HUGO BOSS"
`
`in International Class 9.
`
`31-315/lc
`
`28 =lI$-W 9.“ H11!‘ 88
`
`A2 gogssap ms“:
`Gas;
`
`

`
`TRADEMARKS
`
`It will be seen that these applications are not identical,
`
`but rather are for different marks, namely "BOSS" and "HUGO
`
`BOSS", although both are in International Class 9.
`
`The drawings
`
`of record should be for these two separate marks,
`
`"BOSS" and
`
`"HUGO BOSS," as are the documents relating to the respective
`
`German trademark registrations.
`
`The Official receipts (copies enclosed) as received by us
`
`some weeks ago erroneously showed both applications in
`
`International Class 9 as being for the trademark "BOSS" (copies
`
`enclosed).
`
`No other official receipt was received here for this
`
`applicant for any mark in International Class 9.
`
`Applicant suggests that this confusion may be eliminated
`
`simply by associating the "BOSS" application with the file of
`
`Serial No. 665,340; by associating the "HUGO BOSS" application
`
`with the file of Serial No. 665,364; and by correcting the mark
`
`as shown on the U.S. PTO mailing label for Serial No. 665,364 to
`
`read "HUGO BOSS."
`
`When this situation is corrected, applicant believes that
`
`the following comments become moot:
`
`1. Application Serial No. 665,340, Official Action of
`
`September 24, 1987: page 2, paragraphs 3-5 regarding
`
`informalities and duplicate applications; and,
`
`2. Application Serial No. 665,364; Official Action of
`
`September 28, 1987, page 2, paragraphs 3-5 regarding
`
`informalities and duplicate applications.
`
`31-315/lc
`
`

`
`Applicant would appreciate being advised of the resolution
`
`of this confusion a sufficient period of time before the current
`
`abandonment dates.
`
`If the situation still is unresolved, applicant's attorney
`
`requests a telephone interview.
`
`Date: December 15, 1987
`
`Respectf /ly submitted,
`
`nce S. Wick
`R
`LEYDIG, VOIT & MA
`One IBM Plaza - Suite 4600
`
`Chicago, Illinois
`(312) 822-9666
`
`60611
`
`Attorney for Applicant
`
`Attach: Copies of Filing Receipts and
`Official Actions in Serial Nos. 665,340 and 665,364
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service as first class mail
`in an
`envelope addressed to: Commissioner of »-tents and Trademarks,
`Washington, D.C.
`20231 on December 15,
`
`31-315/lc
`
`

`
`...,,, RECEIVED AND .
`_
`,
`,
`‘
`.
`._1',§§
`REFERRED To
`'
`U.S. UEPARTHENT OF CCMHEHCE — Patent and Trademark Olfifice
`3%’!
`IN REPLY REFER TO THE FOLLONING AND THE FILING DATE:%
`
`OCT 2 ' 1937
`aiagper ho .
`$1?
`6”
`
`f
`
`0
`
`Ramon;
`.P.|K
`é;§‘L,E
`
`IAL NO.
`
`SER
`-
`_ 73/565340 Hum") s6s7.=.ka_.-':.J_'.’§
`
`Agp I
`
`" ‘V
`
`*
`
`__
`
`ADDRESS
`
`_
`
`c-
`
`’
`
`cHM1miIlSH1llfi’l
`-;eWU9‘EHd
`.u(
`.
`Nlfigdemarks
`shing ton,
`:21
`
`ETS
`R
`“R
`
`DC
`
`..-LA;m’Eu.cE,_s_., uzcg
`Lsvoxc. UOIT a HEW’
`___,SUI}f"E 4aoo__'
`‘
`7
`ONE IS" PLAi§ifia. MB‘?
`..
`CAHIZCHGHD I
`Ii-,.,_6O61 DUE DATE
`‘
`.
`FORMPT -
`o 1525 (2-84)
`u.s. DEPT. OEQOMM. PAT. & TM ossuce
`(3) Examining
`(2) 108 mark,
`Also furnish:
`(1) Serial number of application,
`Attorney's name and Law office number.
`(4) Mailing date of this action, and
`(5) Applicant's name
`(or applicant's attorney),
`telephone number and zip
`code.
`
`7
`,1
`
`.
`
`;
`
`5
`
`t containing fee
`,£yments should
`
`clude the word
`ox 5."
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6 MONTHS
`FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`
`The assigned Examining Attorney has reviewed the referenced_application and
`determined the following.
`
`The Examining Attorney refuses registration under Trademark Act Section
`2(d),
`15 b.S.C. Section 1052(d)
`(1986), because the Applicant's mark, when
`used on the identified services,
`is likely to be confused with the
`registrant's mark in U.S. Registration No. 1,221,513, when used on the
`identified services.
`TMEP section 1207.
`See the enclosed registration.
`
`The Examining ettorney must analyze each case in two steps to determine
`whether
`there is a
`likelihood of confusion. First,
`the Examining Attorney
`must
`look at
`the marks themselves for similarities in appearance, sound,
`connotation and commercial
`impression.
`ln_£e_§;l;_du_§gnt_d§_Nemog§§_§
`Co., H76 F.2d 13’b,
`177 USPQ 563 (CCPA 1973).
`Second,
`the Examining
`Kttorney must compare the goods or services to determine if they are
`related or if the activities surrounding their marketing are such that
`confusion as to origin is likely.
`in re August Storck go, 218 USPQ 823
`(TTAB 1983);
`In re International Telephone and Telegraph Corp;,
`197 USPQ
`910 (TTAB 1978); Guardian Products Co.,
`lnc. v. Scott Paper Co., 200 USPQ
`738 (TTAB 1976).
`
`in sound, appearance and commercial
`The parties‘ marks are identical
`impression. Further, both marks are used in connection with
`eyeglasses.
`
`

`
`is not
`The Examining Attorney refuses registration because the Applicant
`the owner of the mark as required by Trademark Act Section 1,
`15 U.S.C.
`Section 1051
`(1986).
`The Applicant's name in the application, Hugo Loss
`A.B., differs from the Applicant's name
`in the foreign registration, Hugo
`Boss Lmbh.
`The Applicant must explain this inconsistency.
`THEP section
`802.07.
`If the foreign registration was assigned to the Applicant before
`the filing date of the United States application.
`the Applicant may
`overcome this refusal by submitting an official certification or certified
`copy of the foreign registration showing the Applicant as the owner.
`
`the Applicant may
`Although the Examining Attorney has refused registration,
`respond to the refusal
`to register by submitting evidence and arguments in
`support of registration.
`
`to register,
`If the Applicant chooses to respond to the refusal
`Applicant must also respond to the following informalities.
`
`the
`
`This mark differs
`the mark in the drawing as BOSS.
`shows
`The Applicant
`materially from the mark on the foreign certificate of registration, where
`it appears as HUGO BOSS.
`The Applicant must submit a new drawing which
`conforms to the mark as it appears on the foreign certificate of
`registration.
`TMEP section 1011.
`
`The Applicant has also filed Application Serial 665.364. Because these
`applications are identical,
`the Applicant must abandon one of them.
`The
`Patent and Trademark Office will not
`issue duplicate registrations.
`THLP
`section 1103.06.
`'
`‘
`
`the Applicant has any questions or needs assistance in responding to
`1f
`this Office action, please telephone the assigned Examining Attorney.
`
`TEH/lr
`
`.
`
`/ g~
`
`tzman
`y ”llen ii
`Ter
`Tr demark Attorney
`LaW'Office IV
`(703) 557-955C
`Serial No. 665340
`
`

`
`‘
`
`I
`i;',.S’.' DEPARTMENT OF CUs»C.~SHCE - Patent and 'iraden1ark‘OfI‘ice
`IN REPLY REFER TO THE FOLLOWING AND THE FILING DATE:
`
`W
`
`~ —~—r
`
`7
`
`; Paper No .
`
`.. .6.
`-s
`;
`~ ~
`.
`, W,”W.WWl..mHuMtuW .n Appgtbgt
`Commissioner of
`T Patents and
`h
`‘
`1 Trademarks
`Washington, DC
`
`__f//
`
`F? CANT.
`o
`«
`J
`;vS'ER|Al;:?N:O.o‘
`I yazsssssowuusn.aosséaiggnfi
`~-
`-w’
`“'
`—
`MABK
`E058
`.
`l
`in,
`‘
`9
`"
`ADDRESS
`‘*'
`”s:;:;M4W“Wvoon .~w~~
`. LflHR£flE£:Sw«NIEK:'
`;'LEYBIBp,UeIT a HéYERfj_f
`.
`, Q’,
`»;
`5L;}j;r;E.‘=-?.»q;g,sg}‘{yvs
`~
`s
`‘
`[mm H [9, W __
`‘
`,.
`,
`
`
`~
`
`”
`V 20231
`
`The address of
`a 1 1 co rr e s po nd e no e
`
`U.s. DEPT. OF comm. PAT. a. TM OFFIQE
`FORM PTo—1525 (2-84)
`(1) Serial nomber of
`Also furnish:
`Attorney's name and Law Office number,
`(5) Applicant‘
`_‘
`_
`
`‘— '
`
`include the word
`II B 0 X
`5 . N
`
`M
`
`(3) Examining
`'s action, and
`telephone number and zip
`
`The Examining Attorney refuses registration under Trademark Act Section
`2(d),
`15 U.S.C. Section 1052(d)
`(1986), because the Applicant's mark. when
`used on the identified services,
`is likely to be confused with the
`registrant's mark in U.S. Registration No. 1,221,515 when used on the
`identified services.
`TMEP section 1207.
`see the enclosed registration.
`
`in two stops to determine
`First,
`tho Lxamining Attorney
`arities in appearance. sound,
`In re
`impression.
`177 USPQ 563 (CCPA 1973).
`the Lxamining
`c
`the goods or Services to dcturminc if they are
`tivitics surrounding their marketing are such that
`confusion as to origin is likely.
`re Aufiust Ltorck KG,
`in re Int
`EJ‘TZIE"""”
`197 USPQ
`(TTAU 1983);
`'
`910 (TTAB 1978);
`G
`200 USPQ
`in sound,
`The parties‘ marks are iduntiool
`impression. Further, both marks are used 1
`
`756 (TTAU 1978).
`
`

`
`is not
`The Examining Attorney refuses registration because the Applicant
`the owner of the mark as required by Trademark Act Section 1,
`15 U.S.C.
`Section 1051
`(1986).
`The Applicant's name in the application, Hugo Boss
`A.B., differs from the Applicant's name
`in the foreign registration, Hugo
`Boss Gmbh.
`The Applicant must explain this inconsistency.
`TMEP section
`802.07.
`If the foreign registration was assigned to the Applicant before
`the filing date of the United States application,
`the Applicant may
`overcome this refusal by submitting an official certification or certified
`copy of the foreign registration showing the Applicant as the owner.
`
`the Applicant may
`Although the Examining Attorney has refused registration,
`respond to the refusal
`to register by submitting evidence and arguments in
`support of registration.
`
`to register,
`If the Applicant chooses to respond to the refusal
`Applicant must also respond to the following informalities.
`
`the
`
`This mark differs
`The Applicant shows the mark in the drawing as BOSS.
`materially from the mark on the foreign certificate of registration, where
`it appears as HUGO BOSS.
`The Applicant must submit a new drawing which
`conforms to the mark as it appears on the foreign certificate of
`registration.
`TMEP section 1011.
`
`/fihe Applicant has also filed Application Serial 665,364.
`Because these
`“J//applications are identical,
`the Applicant must abandon one of them.
`The
`
`Patent and Trademark Office will not
`section 1103.06.
`
`issue duplicate registrations.
`
`TMEP
`
`If the Applicant has any questions or needs assistance in responding to
`this Office action, please telephone the assigned Examining Attorney.
`
`TEH/1F
`
`Terry Ellen Holtzman
`Trademark Attorney
`Law Office IV
`
`(703) 557-9550
`Serial No. 665340
`
`

`
`ff
`
`II
`
`LAW OFFICES
`
`LEYDIG,VO|T & MAYER
`A PARTNERSHIP INCLUDING A PROFESSIONAL CORPORATION
`
`ONE IBM PLAZA SUITE 4600
`
`CHICAGO, ILLINOIS GOSH
`
`(3:2) e22-sees
`CABLE:WOLFEHUE-CGO
`TELEX: 25-3533
`(3I2) 570-2545
`TELECOPIERS:(3la) B22_9209
`
`June 5, 1987
`
`C. FREDERICK LEYDIG
`PHILLIP H. MAYER
`HOMER J. SCHNEIDER
`LEROY w. MI-rCm:I.L*
`JOHN P. BUNDOCK,JR.**
`PAUL L.AI-IERN
`BERTON SCOTT SHEPPARD
`JAMES B. MUSKAL
`DENNIS R. SCHLEMMER
`GORDON R. COONS
`MICHAEL C. I=AvnEN*
`JOHN E. ROSENQUIST
`JOHN w. KOZAK
`CHARLES S. OSLAKOVIC
`muax E‘ PHELPS
`H.M|CHAEL HARTMANN
`JOHN D. FOSTER**
`LAWRENCE S.WlCK
`BERTRAM I.nowLANo***
`sauce M. GAGALA
`CHARLES H. MOTTIER
`JOHN B. CONKLIN
`
`JOHN M. sELz**
`JOHN KILYK.JR.
`NORVAL E. GALLOWAV
`H ERBERT c. ROSE**
`JEFFREV S.WARD
`BRETT A. HESTEREERG
`KEITH B.WlLLHELM
`ROBERT F. GREEN
`JANICE M. MCLAIN
`ROBERT H. BENSON
`I=AuL F. PEDIGO
`RICHARD M..IoI-INsoN
`RICHARD L. NEELEv***
`J. PRESTON oxENI-IAM**
`coI.LEEN M. HEALY
`ROBERT M. IvIAsoN
`BRIAN F. o’sI-IAueHNEssv
`.IoHN J.GRESENS
`PAUL J. KORNICZKY
`LAUFIA 'rERLIzzI+***
`JOHN MICHAEL CURTlN‘H
`
`RICHARD L.‘/OIT
`ARTHUR G. GILKES
`JOHN C. L: FEVER‘H*‘I'
`PAUL HoFI-'MANN~H+
`OF COUNSEL
`
`*IzEsIpE'urr IN ROCKFORD orncs
`“RESIDENT IN WASHINGTON OFFICE
`W*nEsIDEN1' IN PALO ALro OFFICE
`
`+AmnrI1'ED IN ILLINOIS mmr
`1- ADMITYED IN I:.c.oNLv
`H AI>MI1'rEo IN NEW YORK ONLV
`
`665349
`
`WASHINGTON OFFICE
`METROPOLITAN SQUARE
`SUITE 520
`E55 FIFYEENTH STREET, N. w.
`WAsH|NGTON,D.C. 20005
`(202) 737-3770
`CABLEIWOLFEHUB-WASH
`TWX:7IO-622-ISBI
`'rEI.ECoI=IER:(.'eo=) 737—s77s
`PALO ALTO OFFICE
`SUITE zoo
`350 CAMBRIDGE AVENUE
`PALO ALTO, CALIFORNIA 94306
`(4I5) 324-8999
`CABLE.‘ WOLFEHUB-FA
`TELEX1|84|25
`TELECOPIERZH-I5) 322-S443
`ROCKFORD OFFICE
`aIs NORTH CHURCH STREET
`ROCKFORD,|LLINOlS SIIO3
`(sls) 963-766!
`CABLE: WOLFEHUB-RKD
`TELEX: ISOQIO
`ILLINOIS OFFICES
`LEVDIG,VO|T G MAYER, LTD.
`
`Hon. Commissioner of Patents and Trademarks
`Box 5 - Trademarks
`
`Washington, D.C.
`
`20231
`
`Re: Application of Hugo Boss, A.G. Under Section 44(e)
`for Registration of Mark BOSS in International
`Class 9 (Our Ref. 25310)
`
`Dear Sir:
`
`Enclosed herewith please find the above-identified
`application under Section 44(e) of Hugo Boss A.G., a German stock
`company,
`including Power of Attorney and Designation of Domestic
`Representative;
`trademark drawing; certified copy of German
`trade ark registration; verified English translation of same; and
`
`Kindly mark the official filing date and serial number on
`the enclosed post card and place it in the outgoing mail.
`
`Sincere
`
`Lsw/ lc
`Enclosure (7)
`31-112
`
`

`
`_fi65340
`
`Mark:
`
`BOSSy
`
`Int. Class: 9
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`Applicant:
`;F5E
`$ ' ddress:
`$0
`
`€3\1
`
`HUGO BOSS A.G.%/ company)
`5 German stoc
`Dieselstrasse 12
`7430 Metzingen
`
`Federal Republic of Germany
`
`/
`
`/7
`6
`Dog} :
`
`STATEMENT
`
`‘_“
`The above—identified applicant has adopted and has
`
`registered in its country of origin the trademark shown in the
`ay/Q‘
`accompanying drawing, for the following goods- "—-Glasses —-
`Especially Sun Glasses -— and Parts Thereof-f"
`in International
`
`Class 9, and requests that said mark be registered in the United
`States Patent and Trademark Office on the Principal Register
`I
`
`established by the Trademark Act of July 5, 1946.
`
`Applicant requests registration under Section 44(e) of the
`
`Trademark Act of July 5, 1946, as amended, on the basis of German
`
`Trademark Registration No. 1,056,140, which was issued by the
`
`German Patent Office on March 13, 1987.
`
`A certified copy of the
`
`said German registration certificate and verified translation
`
`thereof are submitted herewith.
`
`._——)-E;Applicant is the owner of U.S. Trademark Registrations, No.
`
`1,429,731, of the mark "BOSS", for goods in International Class
` ‘
`
`/Pg;
`
`3, and No. 1,373,892,
`
`in International Class 3;? Cgmlnik
`
`31-30l/lc
`
`-1-
`
`

`
`V»TRADEMARKS
`
`Applicant also submits herewith the required filing fee of
`
`$2ooLoo.
`
`DECLARATION
`
`Jochen Holy
`
`, being duly warned that willful false
`
`statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the
`
`United States Code and that such willful