Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/361136      

 

NOTICE OF SUSPENSION

 

The examiner has considered the applicant’s October 23, 2002 communication and found it unpersuasive. Thus, action on this application is suspended pending the disposition of:

 

                        - Application Serial No(s). 76060322, 76311303, 75446228, 75464819, 75446140, 75355934, 75354573, 75320387, 75319792, 75319675, 75259832, and 75246523

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) is attached.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

Section 2(d) Refusals

 

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 have registered. Section 2(d) refusals will issue regarding these applications once suspension is lifted.

 

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 The advisory regarding this application is withdrawn.

 

Please note, other requirements remain outstanding from the first action. They are repeated below. While the applicant need not address these requirements at this time, the applicant is welcome to do so. These requirements must, however, be addressed once suspension is lifted.

 

Specimen Missing

 

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.

 

Name of an Individual

 

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.

 

Applicant May Not Claim Section 1(a) and 1(b) on Same Goods

 

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.

 

Amendment Guidelines

 

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/.

 

Other Requirements

 

The disclaimer proffered by the applicant is acceptable and has been made of record. Such disclaimer, however, is not sufficient to mitigate the likelihood of confusion with the above-cited registrations and applications.

 

GENERAL INFORMATION

 

For your convenience, the Trademark Status Line, (703) 305-8747, has been established for immediate case status inquiries, and is available Monday through Friday, from 6:30 a.m. until Midnight, Eastern Standard Time.

 

The requirements for responding via e-mail or facsimile are posted on the Office web site at <http://www.gov.uspto.report/september11/tmelecresp.htm>.  If filing a response via e-mail, applicant must use the Law Office 104 e-mail address specifically designated for that purpose: ecom104@uspto.gov.  Whether applicant chooses to respond via mail, e-mail or facsimile, applicant should submit its response using only one of the aforementioned means of communication.  Duplicate responses will delay the prosecution of the application.

 

Customers can electronically change the correspondence address on any trademark/service mark application or registration that is currently active with the Office by using the web-based TEAS (Trademark Electronic Application System) form.  For further information, visit <http://www.gov.uspto.report/web/trademarks/tmchangeaddress.htm>.

 

The Third Edition of the Trademark Manual of Examining Procedure (TMEP) is now posted on the USPTO web site.  This revised TMEP, which replaces all previous editions, can be accessed at <http://www.gov.uspto.report/web/offices/tac/tmep/>.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

John T. Lincoski

Trademark Attorney

Law Office 104

(703)308-9104 ext. 261