To: Elle MacPherson (bmcfeely@kanekessler.

com)
Subject: TRADEMARK APPLICATION NO. 78497942 - ELLE MACPHERSON -
5509-4
Sent: 2/20/2009 9:05:46 AM
Sent As: ECOM105@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/497942

MARK: ELLE MACPHERSON

*78497942*
CORRESPONDENT ADDRESS:
BRENDAN P. MCFEELY RESPOND TO THIS ACTION:
KANE KESSLER, PC http://www.uspto.gov/teas/eTEASpageD.htm
26TH FLOOR
1350 AVENUE OF THE AMERICAS GENERAL TRADEMARK INFORMATION:
NEW YORK NY 10019-4702 http://www.uspto.gov/main/trademarks.htm

APPLICANT: Elle MacPherson

CORRESPONDENT’S
REFERENCE/DOCKET NO:
5509-4
CORRESPONDENT E-MAIL ADDRESS:
bmcfeely@kanekessler.com

OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 2/20/2009

This letter responds to the applicant’s communication of February 11, 2009. The applicant has
submitted the foreign registration of the mark. The following issues are unresolved.

Scope of Foreign Registration

The following wording in the identification of goods and services in the U.S. application is
unacceptable because it exceeds the scope of the goods and services in the foreign registration: “pre-
recorded video tapes, CDs and DVDs featuring radio, television and film appearances by a model and
actress” (Class 9), and “fashion model services” (Class 35). See 37 C.F.R. §2.32(a)(6); TMEP §1012.

Therefore, applicant must satisfy one of the following:

(1) Amend the identification of goods and services in the U.S. application to correspond to
the goods and services identified in the foreign application or registration, ensuring that all
goods and services beyond the scope of the foreign application or registration are deleted from
the U.S. application; or

(2) Delete the Trademark Act Section 44 basis for the goods and services beyond the scope
of the foreign registration and rely solely on the Section 1 basis for those goods and services.

See 15 U.S.C. §§1051, 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12
USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1012, 1402.01(b).

Identification and Classification of Goods

The Class 18 amended identification of goods is unacceptable because the term “cosmetic bags and
pouches” is indefinite. If these goods are sold empty, they are classified in Class 18. If they are sold
with cosmetics, they are classified as cosmetics in Class 3.

The Class 21 amended identification of goods is unacceptable because the terms “silverware” and
“glassware” are indefinite. The applicant must indicate the specific types of silverware, e.g., forks,
knives, spoons. The applicant must also specify the types of glassware, e.g., beverage glassware.

The applicant should note that forks, knives, spoons, and flatware are classified in Class 8 rather than
Class 21.

The applicant may adopt the following identification and classification, if accurate:

Cosmetics, namely lipstick, eyeliner, mascara, blush, foundation powder, lip liner, lip gloss, eye
shadow; perfume; cologne; toilet water; eau de toilette; after shave; after shave balm; parfum; eau
de parfum; hand, face and body creams; hand, face and body lotions; hand, face and body
powders; skin moisturizer; body wash; skin conditioning cream; hand cream; body soaks; body
rubs; shampoo; hair conditioner; mousse; styling gel; antiperspirants and deodorants; shower gel;
soap; sun screen; scented and unscented bath oils (Class 3)

Forks; silverware, namely, [indicate type, e.g., forks, knives, spoons]; flatware (Class 8)

Eyeglasses; sunglasses (Class 9)

Jewelry; watches; clocks (Class 14)

Handbags, wallets, key cases, change purses, cosmetic bags and pouches sold empty, portfolios;
luggage, namely suit bags, trunks, suitcases, toilet kits, duffle bags, tote bags, briefcases and
 attaché cases, overnight bags; umbrellas; credit card holders and business card holders (Class 18)

Furniture; mirrors; picture frames (Class 20)

Combs; hair brushes; housewares, namely eating, cooking and decorative utensils, namely,
spatulas, turners, stirrers, strainers, cooking spoons, tongs; dinnerware made of porcelain;
dinnerware made of china; beverage glassware; crystal, namely wine glasses, drinking vessels,
and pitchers; paper plates (Class 21)

Fabric, namely cotton, wool and linen; bed linens, namely sheets, bedspreads, duvets, blankets,
pillow cases, comforters; bath linens, namely towels (Class 24)

Clothing, namely skirts, shirts, blouses, dresses, vests, t-shirts, suits, shorts, trousers, pants, jeans,
jumpers, sweaters, jackets, coats, scarves, shawls, underwear, lingerie, socks; sleepwear, namely
pajamas, nightgowns, negligees and nightshirts; dressing gowns; bathrobes; swimwear;
beachwear, namely pants and tops; swimwear; footwear, namely sandals, shoes, boots and
slippers; hats; caps (Class 25)

Advertising and business services, namely, business consultation and advertising consultation;
advertising and promotional services, namely, promoting the goods and special events of others;
promotion of products and services for others through endorsement by a celebrity; retail store
services featuring cosmetics, clothing, accessories, housewares, jewelry (Class 35)

Entertainment services, namely, personal appearances by a celebrity; live radio, television and
film appearances by a model and actress; motion picture film production and direction; radio
program production and direction; television program production and direction (Class 41)

TMEP section 1402.01 and 1402.11. The applicant should note that, although an application may be
amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R.
Section 2.71(b); TMEP section 1402.01 and 1402.06. Therefore, the applicant may not amend to
include any goods/services that are not within the scope of goods /services set forth in the present
identification.

For additional information regarding acceptable wording, the Trademark Manual of Acceptable
Identifications and Classifications for Goods and Services is accessible on the World Wide Web at
http://tess2.uspto.gov/netahtml/tidm.html.

Additional Classes of Goods/Services

Eleven classes of goods/services are suggested above. If applicant were to include more than ten
classes of goods/services, then the applicant must comply with each of the following:

(1) The applicant must list the goods/services by class with the classes listed in ascending numerical
order. TMEP § 1403.01; and
(2) The applicant must submit a filing fee for each class of goods/services not covered by the fee
already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01. The filing fee for adding classes to
an application is as follows: $325 per class, when the fees are submitted with a response filed online via
the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html; and
$375 per class, when the fees are submitted with a paper response. Consolidated Appropriations Act,
2005, Pub. L. 108-447.

/Leigh Caroline Case/

Trademark Attorney, Law Office 105
(571) 272-9140

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.
To: Elle MacPherson (bmcfeely@kanekessler.com)
Subject: TRADEMARK APPLICATION NO. 78497942 - ELLE MACPHERSON -
5509-4
Sent: 2/20/2009 9:05:49 AM
Sent As: ECOM105@USPTO.GOV
Attachments:

IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 2/20/2009 FOR
APPLICATION SERIAL NO. 78497942

Please follow the instructions below to continue the prosecution of your application:

VIEW OFFICE ACTION: Click on this link

http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=78497942&doc_type=OOA&mail_date
(or copy and paste this URL into the address field of your browser), or visit
http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access
the Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this notification.

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if
a response is required; (2) how to respond; and (3) the applicable response time period. Your response
deadline will be calculated from 2/20/2009.

Do NOT hit “Reply”to this e-mail notification, or otherwise attempt to e-mail your response, as
the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you
respond online using the Trademark Electronic Application System response form at
http://www.uspto.gov/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
action.

WARNING
1. The USPTO will NOT send a separate e-mail with the Office action attached.

2. Failure to file any required response by the applicable deadline will result in
the ABANDONMENT of your application.