UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION
`SERIAL NO.   79234007
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`MARK: ICRUSH
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`CORRESPONDENT
`ADDRESS:
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`       iCrush
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`       Suelzburgstrasse 11
`         50937 Koeln
`           FED REP
`GERMANY
`    
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`APPLICANT: iCrush
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`    
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`*79234007*
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`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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`NO:       
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`  N/A
`CORRESPONDENT
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`E-MAIL ADDRESS:   
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`OFFICE ACTION
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`INTERNATIONAL REGISTRATION NO. 1406383
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`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
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`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do so, enter the U.S. application serial
`number for this application and then select “Documents.”   The Mailing Date used to calculate the response deadline for this provisional full
`refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
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`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. 
`See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
`
`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.
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`SEARCH OF OFFICE’S DATABASE OF MARKS
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`SUMMARY OF ISSUES:
`Requirement – Amend Mark Description
`Requirement – Amend Identification of Goods
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`REQUIREMENT – AMEND MARK DESCRIPTION
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`Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears
`in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Applications for marks not in
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`standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design
`elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  And for marks depicted in color, this description must specify where the
`color(s) appear(s) on the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).
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`Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark.  See
`TMEP §807.07(a)(ii).  The following is suggested, if accurate:
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`The mark consists of the stylized wording “ICRUSH” in black.
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`REQUIREMENT – AMEND IDENTIFICATION OF GOODS
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`The identification of goods contains parentheses and brackets.  Generally, applicants should not use parentheses and brackets in identifications in
`their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that
`have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only
`exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter
`immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu
`pieces (abura-age).”   Id.
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`Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information
`into the description of the goods.
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`Additionally, the following particular entries must be amended for the reasons stated below:
`“Ornaments [jewellery, jewelry (am.)]:” The nature of the goods is unclear.  Applicant may clarify that the goods are ornaments of
`precious metal in the nature of jewelry, or specify particular ornaments in Class 14, e.g., ornaments of jet, holiday ornaments of precious
`metal, ornamental lapel pins.
`“ornamental pins:” This wording is too broad and must be clarified because it could identify goods in more than one international class. 
`See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c).  For example, ornamental novelty pins are in International Class 26
`and ornamental pins being jewelry are in International Class 14.  In an application filed under Trademark Act Section 66(a), an applicant
`may not change the classification of goods from that assigned by the International Bureau of the World Intellectual Property Organization
`in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although the goods may
`be classified in several international classes, any modification to this wording must identify goods in International Class 14 only, the class
`specified in the application for these goods.  See TMEP §1904.02(c).
`“jet:” Applicant must clarify that the goods are unwrought or semi-wrought to justify Class 14 classification.  
`“semi-precious articles of bijouterie:” This wording is indefinite because the particular articles are not specified, e.g., semi-precious
`stones, minerals, and gemstones.
`“watch boxes:”   This wording is indefinite and must be clarified to specify that the boxes are presentation boxes.
`“rope chain made of precious metal:” Applicant must clarify the nature of the goods, e g., jewelry, namely, rope chain made of precious
`metal.
`“trinkets of bronze; trinkets coated with precious metal; decorative articles [trinkets or jewellery] for personal use:” This wording is too
`broad and must be clarified because it could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP
`§§1402.01, 1402.03, 1904.02(c).  For example, bronze holiday ornaments are in International Class 6, bonnet pins of precious metal are in
`Class 26, and bronze and precious metal coated jewelry charms are in International Class 14.  In an application filed under Trademark Act
`Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World
`Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  
`Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in
`International Class 14 only, the class specified in the application for these goods.  See TMEP §1904.02(c).
`“scale models [ornaments] of precious metal:” This wording is too broad and must be clarified because it could identify goods in more
`than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c).  For example, scale model kits are in
`Class 28, and model figures being ornaments of precious metal are in International Class 14.  In an application filed under Trademark Act
`Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World
`Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  
`Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in
`International Class 14 only, the class specified in the application for these goods.  See TMEP §1904.02(c).
`“clothing ornaments of precious metals:” Applicant must clarify the nature of the goods, e.g., in the nature of jewelry or lapel pins.
`“parts and fittings for jewellery:” In the identification of goods, applicant must use the common commercial or generic names for the
`goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R.
`§2.32(a)(6).  Where applicant uses indefinite words such as “parts and fittings,” such wording must be followed by “namely,” and a list
`of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).
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`Applicant may adopt the following amendment, if accurate:
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`Class 14:         
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`Ornaments of precious metal in the nature of jewelry; jewellery boxes; jewellery rolls; jewel cases; cabochons; jewel
`chains; ornamental pins being jewelry; paste jewellery; jewel pendants; ornamental lapel pins; jewellery, clocks and
`watches; pendants; medallions; jade being jewellery; precious jewellery; jet, unwrought or semi-wrought; lockets being
`jewellery; rings being jewellery; pearls being jewellery; jewellery; pins being jewellery; brooches being jewellery; gold
`thread jewellery; bracelets being jewellery; necklaces being jewellery; silver thread jewellery; jewellery, including
`imitation jewellery and plastic jewellery; bracelets for watches; amulets being jewellery; crosses being jewellery; semi-
`precious articles of bijouterie, namely, {specify articles, e.g., semi-precious stones, minerals, and gemstones}; enamelled
`jewellery; jewellery chains; scarf clips being jewelry; custom jewelry; cameos being jewelry; jewelry guard chains; lapel
`pins being jewellery; identification bracelets being jewelry; cloisonné jewellery; cases fitted for jewels; musical jewelry
`boxes; jewellery findings; rope chain being jewellery made of common metal; clasps for jewellery; jewellery boxes and
`presentation boxes for watches; jewelry rolls for storage; presentation boxes for jewellery; pet jewelry; jewellery made of
`precious metals; women's jewelry; decorative pins being jewellery; decorative brooches being jewellery; jewelry boxes of
`precious metal; jewelry, namely, rope chain made of precious metal; leather jewelry boxes; jewelry boxes of metal;
`jewellery made of glass; agate as jewellery; platinum jewelry; sterling silver jewellery; articles of jewellery made of
`precious metal alloys; shoe jewellery; key rings being split rings with trinket or decorative fob; hat jewellery; jewellery
`made of semi-precious materials; wooden jewellery boxes; jewellery made of plastics; jewellery made of precious stones;
`jewellery rope chain for anklets; trinkets of bronze in the nature of jewelry charms; jewellery rope chain for bracelets;
`ornamental figurines made of precious metal; ornamental sculptures made of precious metal; model figures being
`ornaments coated with precious metal; model animals being ornaments made of precious metal; threads of precious
`metal being jewellery; imitation jewellery ornaments; jewellery being articles of precious metals; jewelry for the head;
`imitation jet; clips of silver being jewellery; jewellery fashioned of semi-precious stones; cuff links; fitted jewelry
`pouches; articles of jewellery coated with precious metals; jewelry boxes not of metal; jewellery fashioned from non-
`precious metals; jewelry cases being caskets or boxes; jewelry organizer rolls for travel; jewelry boxes, not of precious
`metal; small jewellery boxes of precious metals; gold plated brooches being jewellery; trinkets coated with precious
`metal, namely, {specify trinkets in Class 14, e.g., jewelry charms coated with precious metal, figures coated with
`precious metal}; jewellery rope chain for necklaces; jewelry cases not of precious metal; charity bracelets; scale model
`figures being ornaments made of precious metal; model animals being ornaments coated with precious metal;
`cabochons for making jewellery; bracelets made of embroidered textile being jewellery; personal jewellery; rings being
`jewellery made of precious metal; jewellery being articles of precious stones; synthetic stones being jewellery; jewellery
`in the form of beads; jewellery made of bronze; chain mesh of precious metals being jewellery; tie pins; jewellery coated
`with precious metal alloys; jewellery containing gold; dress ornaments in the nature of jewellery; charms being jewellery
`of common metals; corporate recognition jewelry; rings being jewellery made of non-precious metal; lapel pins of
`precious metals being jewellery; clothing ornaments of precious metals in the nature of jewelry; jewelry pins for use on
`hats; jewellery chain of precious metal for bracelets; articles of jewellery with ornamental stones; small jewelry boxes, not
`of precious metal; decorative articles for personal use, namely, jewellery and trinkets, namely, {specify trinkets in
`Class 14, e.g., key rings comprised of split rings with decorative trinkets, figurines of precious metal}; beads for making
`jewellery; jewellery incorporating diamonds; jewellery incorporating precious stones; jewellery fashioned of cultured
`pearls; jewellery made of crystal coated with precious metals; jewellery chain of precious metal for anklets; jewellery
`chain of precious metal for necklaces; key rings of precious metal comprised of trinkets or fobs; flexible wire bands for
`wear as a bracelet; parts and fittings for jewellery, namely, {specify parts and fittings, e.g., beads for making jewelry,
`watch parts and fittings}; ornaments of precious metal in the nature of jewelry; jewelry clips for adapting pierced earrings
`to clip-on earrings; collets being parts of jewellery; jewellery for personal adornment; articles of jewellery made from rope
`chain; ear ornaments in the nature of jewellery; semi-finished articles of precious stones for use in the manufacture of
`jewellery; semi-finished articles of precious metals for use in the manufacture of jewellery; fitted covers for jewelry rings
`to protect against impact, abrasion, and damage to the ring's band and stones
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`See TMEP §§1402.01, 1402.03.
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`Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original
`application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See
`TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of
`permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property
`Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau.  37
`C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods
`transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).
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`For 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.
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`RESPONSE GUIDELINES
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`For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action
`includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  
`Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully.  To
`respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  
`For more information and general
`tips on responding to USPTO Office actions, response options, and how to file a response online,
`see “ Responding to Office Actions” on the USPTO’s website.
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`If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International
`Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15
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`U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02.  
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`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.   See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S.
`commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the
`proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R.
`§2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature,
`or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).
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`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
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`.03(b), 608.01.  
`DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
`
`C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.     
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`/Andrea B. Cornwell/
`Examining Attorney
`Law Office 115
`(571) 272-4608
`andrea.cornwell@uspto.gov
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`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
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`All informal e-mail communications relevant to this application will be placed in the official application record.
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`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
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`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
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`status, see http://www.uspto.gov/trademarks/process/status/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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