UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/361136
APPLICANT: TIPO OIL CORPORATION
|
|
|
CORRESPONDENT ADDRESS: ANTONIO CASELINI 155 TERRAZA COURT COSTA MESA, CA 92627
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
|
|
MARK: MICHAEL SCHUMACHER
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/361136
This letter responds to the applicant’s June 19, 2003 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.
The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark. 37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i). See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).
The test for determining whether an amendment is a material alteration is as follows:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983).
Here, the requested modification does not create the impression of being essential the same mark. Rather, the applicant seeks to delete a significant portion of the mark. This constitutes a material alteration.
Those refusals and requirements raised in prior actions are maintained and are repeated below for the applicant’s convenience. Furthermore, the examiner notes that the applicant’s attorney has not provided a physical address for correspondence with that attorney. If the applicant wishes the Office to communicate directly with applicant’s counsel, the applicant should so indicate and provide a business address for applicant’s attorney.
The Section 2(d) refusals with regard to Reg. Nos. 1387200, 1428019, 1562917, 1713451, 2117160, 2133606, 2017159, 1657776 2518934 and 2371379 are maintained. Please note, many of the registrations are owned by a common source. Those not connected with Formula 1 racing concern goods highly similar to those of the applicant.
Please note, the marks in App. Nos. 75184357, 75354569, 75982090, 75981879, 75502698, and 74437804, 75446228, and 75246523 have registered. Section 2(d) refusals will issue in due course.
App. No. 76019995 has been abandoned. The advisory regarding this application is withdrawn.
Furthermore, the advisories with regard to prior pending application nos. 76060322, 76311303, 75464819, 75446140, 75355934, 75354573, 75320387, 75319792, 75319675, and 75259832 are maintained as well.
While the application file indicates that the applicant submitted the required specimen, this Office apparently misplaced this specimen. Please submit an additional specimen identical to that originally filed. The examining attorney regrets any inconvenience to the applicant.
The applicant has stated that the mark does not identify a “living American citizen.” Please note, the requirement that the applicant procure consent from living individuals is not restricted solely to American citizens. Rather, the requirements extend, without qualification, to “living individuals.” See 15 U.S.C. § 11052. (No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature….”)
Michael Schumacher is a prominent Formula 1 driver whose consent must be made of record, regardless of his citizenship. Furthermore, the fact that a name appearing in a mark may actually be the name of more than one person does not negate the requirement for a written consent to registration, if the mark identifies, to the relevant public, a particular living individual or deceased United States president whose spouse is living. In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) (affirming refusal to register PRINCE CHARLES, for meat, in the absence of consent to register by Prince Charles, a member of the English royal family. “Even accepting the existence of more than one living ‘Prince Charles,’ it does not follow that each is not a particular living individual.”)
Thus, the consent requirement is maintained and repeated for the applicant’s convenience. If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name. If the name does not identify a living individual, the applicant should state so for the record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.
The applicant asserts use of the mark in commerce for its goods and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods/services. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b). The applicant must delete one basis or divide the goods/services between the two bases, as appropriate.
Amendment to Identification Unacceptable
The applicant has amended its identification to: “automobiles, racing automobiles, and structural and decorative parts therefor.” The proposed amendment of the identification is unacceptable because the entire wording designates goods that are not within the scope of the identification that was set forth in the application at the time of filing. While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.
Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general. The scope of the goods and services identified initially, or as limited by an express amendment, establishes the outer limit for permissible amendments.
The identification requirements raised in the first action are therefore maintained. Furthermore, because the amendment is unacceptable, the original identification remains operative and must be used to determine the scope of goods and services involved in any determinations of the likelihood of confusion.
Please note that, while 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(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.
The Acceptable Identification of Goods and Services Manual may be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). The applicant is advised that the Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
John T. Lincoski /JTL/
Trademark Attorney
Law Office 113
(703)308-9113 ext. 286
John.Lincoski@USPTO.GOV
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.