UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/433011
APPLICANT: Behr GmbH & Co.
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CORRESPONDENT ADDRESS: RICHARD L. SCHWAAB FOLEY & LARDNER WASHINGTON HARBOUR 3000 K STREET, N.W., SUITE 500 WASHINGTON, D.C. 20007-5109 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom104@uspto.gov
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MARK: AETHOS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 016906-0254
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/433011
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
However, several concerns remain to be addressed.
The applicant has identified its goods as “Parts for motor vehicles insofar as contained in Class 12; cooling equipment and cooling systems, especially for motor vehicles, especially for internal combustion engines and alternative drives (electric motor, fuel cell) and parts thereof as well as components as assemblies, especially cooling modules, oil modules, exhaust gas recirculation modules and as individual parts, especially coolant coolers, refrigerant condensers, charge air coolers, oil coolers, electronic coolers, battery coolers, fuel coolers, power steering oil coolers, low-temperature coolers, blowers, fans and fan shrouds, fan drives, fan clutches, fluid friction clutches as well as exhaust gas heat exchangers, exhaust gas recirculation valves, pumps, coolant pumps, coolant thermostats, connecting lines, coolant hoses, supplemental heating apparatus, systems for the measurement and control of temperature, especially coolant temperature; heating, ventilating and climate control apparatus as well as climate control systems especially for motor vehicles and parts thereof, as well as components, especially climate control apparatus, blowers, blower rotors, blower drives; systems for temperature and climate regulation, air filters, interior space filters, operating controls, controllers, pneumatic and electrical actuators, sensors for measuring air and coolant temperature, valves, heat exchangers, such as heaters, refrigerant evaporators and condensers, supplemental heaters, PTC supplemental heaters and PTC controls, refrigerant expansion devices, coolant pumps and refrigerant compressors, refrigerant tubing, collectors or reservoirs and dryers for refrigerants; instrument panel apparatus and modules for motor vehicles as well as parts thereof, especially dashboards, center consoles, air outlets, cross rails, air conditioning apparatus, wiring harnesses, air ducts. front-end modules for motor vehicles and parts thereof, especially cooling modules, headlights and reflectors, cross rails, bumpers; maintenance and repair of the aforementioned goods.”
Concerns regarding the applicant's identification will be addressed seriatim. However, the examiner notes that the applicant should replace the indefinite term “especially” with “namely” throughout.
“Parts for motor vehicles insofar as contained in Class 12” is unacceptable as indefinite. The applicant must amend its identification to remove this phrase or replace it with the exact common commercial name of the goods.
“Cooling equipment and cooling systems, especially for motor vehicles, especially for internal combustion engines and alternative drives (electric motor, fuel cell) and parts thereof” is more properly classified in class 7. Furthermore, the applicant must amend its identification to state the components of the systems and the common commercial name of the “equipment.” The applicant must replace the indefinite “parts” with “replacement and structural parts.” Finally, parentheses and brackets should not be used in identifications of goods and services. The Post Registration Section of the Office uses single brackets to indicate that goods/services have been deleted from a registration either by amendment of a registration under 15 U.S.C. §1057, filing of a partial affidavit of continued use under 15 U.S.C. §1058, or filing of a partial renewal application under 15 U.S.C. §1059. The Post Registration Section also uses double parentheses to indicate that certain goods or services are not claimed in an affidavit of incontestability under 15 U.S.C. §1065. See TMEP Chapter 1600 regarding affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, renewal applications under 15 U.S.C. §1059, affidavits of incontestability under 15 U.S.C. §1065, and amendment of registrations under 15 U.S.C. §1057.
Therefore, to avoid confusion, applicants should not use parentheses and brackets in the identification of goods or services in an application. The only time parentheses may be used in an identification is when the parentheses merely explain or translate the matter preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification.
“As well as components as assemblies, especially cooling modules, oil modules, exhaust gas recirculation modules” is more properly classified in class 7. The applicant must also specify the machinery or vehicles for which the goods are intended to be used.
The portion of the recitation reading “And as individual parts, especially coolant coolers, refrigerant condensers, charge air coolers, oil coolers, electronic coolers, battery coolers, fuel coolers, power steering oil coolers, low-temperature coolers, blowers, fans and fan shrouds, fan drives, fan clutches, fluid friction clutches as well as exhaust gas heat exchangers, exhaust gas recirculation valves, pumps, coolant pumps, coolant thermostats, connecting lines, coolant hoses, supplemental heating apparatus, systems for the measurement and control of temperature, especially coolant temperature” is problematic because the goods must be properly identified and classified individually and not as part of systems. Thus, the examiner notes as follows.
“Coolant coolers” is unacceptable because the use for which the goods are intended is unclear. The applicant must amend its identification to state the use for which the goods are used. Please note, these goods are likely classified in class 11.
“Refrigerant condensers” are classified in class 7. So too are “charge air coolers [and] oil coolers.”
“Electronic coolers,” is indefinite and likely classified in class 9. The applicant must amend its identification to state the common commercial name of the goods.
“Battery coolers, fuel coolers, power steering oil coolers,” are classified in class 7.
“Low-temperature coolers” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods, and their intended use. Please note, proper classification will turn on the amendment. However, “low temperature coolers, used in medical, research, and commercial laboratories” are classified in class 11.
“Blowers, Fans and fan shrouds, fan drives, fan clutches, fluid friction clutches” is unacceptable because the use for which the goods are intended is unclear. The applicant must amend its identification to so specify.
“Exhaust gas heat exchangers, and exhaust gas recirculation valves” are classified in class 7.
“Pumps” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods and the use for which they are intended.
“Coolant pumps, are classified in class 11 unless they are engine parts, in which case they are in class 7.
“Coolant thermostats” are in class 9.
“Connecting lines” is indefinite. The applicant must amend its identification to state the common commercial name of the goods.
“Coolant hoses” are classified in class 7.
“Heating, ventilating and climate control apparatus as well as climate control systems especially for motor vehicles and parts thereof, as well as components, especially climate control apparatus, blowers, blower rotors, blower drives, systems for temperature and climate regulation, air filters, interior space filters, operating controls, controllers, pneumatic and electrical actuators, sensors for measuring air and coolant temperature, valves, heat exchangers, such as heaters, refrigerant evaporators and condensers, supplemental heaters, PTC supplemental heaters and PTC controls, refrigerant expansion devices, coolant pumps and refrigerant compressors, refrigerant tubing, collectors or reservoirs and dryers for refrigerants” is unacceptable as indefinite.
If accurate, the applicant may consider amending its identification to “Heating, ventilation and air conditioning systems and climate control system for automotive vehicles, namely, air conditioning systems comprising air conditioners, blowers, blower rotors, and blower drives, interior air filters, operating controllers and electrical controllers, pneumatic and electrical actuators, sensors for measuring air and coolant temperature, air conditioner valves, heat exchangers, refrigerant evaporators and condensers, PTC auxiliary heaters and PTC regulators, refrigerant expansion valves, coolant pumps, and refrigerant compressors, refrigerant tubing, collectors and dryers for refrigerants,” in class 11.
“Instrument panel apparatus and modules for motor vehicles as well as parts thereof, especially dashboards, center consoles, air outlets, cross rails, air conditioning apparatus, wiring harnesses, air ducts. front-end modules for motor vehicles and parts thereof, especially cooling modules, headlights and reflectors, cross rails, bumpers” is unacceptable as indefinite. If accurate, the applicant may consider amending its identification to: “Land vehicle console parts, namely dashboards, center consoles, air outlets, cross rails, wiring harnesses, air ducts and front end modules and bumpers.”
Please note, “headlights and vehicle reflectors” and “automotive air conditioners” are classified in class 11.
“Maintenance and repair of the aforementioned goods” is unacceptable because the applicant has included services in its identification of goods. The applicant must remove the language and heed the Insufficient Fee Requirements set forth below. Furthermore, the applicant must specify that the services are performed “for others.” Finally, if the applicant retains this section and sets it off in class 37, it must list the “aforementioned goods” by name.
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/.
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).
The applicant must amend the preamble of the application to identify the applicant as follows, if accurate: BEHR GmbH & Co., a partnership organized under the laws of Germany, composed of Behr GmbH.” The applicant must list all general partners and their national citizenship or the state or country of their organization or incorporation, as appropriate. 37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.
Meaning Inquiry
The applicant must indicate whether the mark "AETHOS" has any meaning or significance in the relevant trade or industry, in a foreign language or as applied to the goods. 37 C.F.R. Section 2.61(b). If the mark has no meaning or significance, the applicant must submit a statement that the mark has no meaning or significance other than trademark significance. 37 C.F.R. Section 2.61(b); TMEP Section 808.03(c).
If the mark has meaning or significance in the relevant trade or industry or as applied to the goods, the examining attorney may refuse registration on the Principal Register because the proposed mark is merely descriptive of the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP 1209 et seq.
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
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.
John T. Lincoski
Trademark Attorney
Law Office 104
(703)308-9104 ext. 261