Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/361136

 

This letter responds to the applicant’s October 30, 2003 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.

 

Amendment to the Mark

 

The applicant’s withdrawal of its proposed amendment to the mark is acceptable and has been noted for the record. As such, the objection is withdrawn.

 

Specimen

 

The examiner thanks the applicant for the submission of a specimen. However, this specimen does not agree with the drawing of the mark in this case.

 

The drawing displays the mark as “MICHAEL SCHUMACHER FORMULA 1 CAR USA.”  However, this differs from the display of the mark on the specimen, where it appears as “MICHAEL SHUMACHER.”  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

Consent

 

The requirement that the applicant provide a consent from Michael Schumacher is repeated and maintained.

 

Section 2(d) Refusals

 

The Section 2(d) refusals with regard to Reg. Nos. 1387200, 1428019, 1562917,  2017159, and 1657776 are maintained. Please note, many of the registrations are owned by a common source. (Attached the applicant will find printouts from the Office’s assignment database showing the common ownership of the marks). Those not connected with Formula 1 racing concern goods highly similar to those of the applicant. In all cases, the dominant element of the mark is “FORMULA 1.” This is identical to a substantial element of the registrant’s mark.

 

Following the applicant’s clarification of the nature of its goods, the Section 2(d) refusal with regard to the following registrations are withdrawn: 2518934, 213606, 2117160, and  2371379

 

Reg. No 1713451 has been cancelled and the refusal with regard to that mark is withdrawn.

 

Prior Pending Applications

 

Please note, the mark in App. Nos. 75184357 has registered. A Section 2(d) refusal will issue in due course.

 

Following clarification of the applicant’s goods, the following advisories are withdrawn: 75354569, 75982090, 75981879, 75502698, 74437804, 75446228, and 75246523 

 

App. No. 76019995 has been abandoned. The advisory regarding this application is withdrawn.

 

Furthermore, the advisories with regard to prior pending application nos. 76060322, 75355934, 75354573,and 75259832 are maintained as well.

 

The advisory is withdrawn with regard to the following applications: 76311303, 75464819, 75446140,  75320387, 75319792, 75319675 following clarification of the applicant’s goods.

 

Amendment to Identification

 

The applicant has amended its identification to “MOTOR OIL, TRANSMISSION OIL, GEAR OIL, POWER STEERING OIL, RACING OIL, and AUTOMOBILE LUBRICANTS AND ENGINE ADDITIVES.”

 

This identification is unacceptable because it includes goods in two classes. Please note, “motor oil, transmission oil, power steering oil, racing oil and automobile lubricants” is in class 4, whereas “engine additives” are in class 1. The applicant must amend its identification to separate the goods into their proper classes and heed the Insufficient Fee Requirements outlined below.

 

Insufficient Fee Requirements

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(703)308-9113 ext. 286

John.Lincoski@USPTO.GOV