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  76/433011

 

This letter responds to the applicant’s July 15, 2003 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.

 

Drawing/Foreign Registration Agreement

 

The mark “AETHOS” shown on the drawing differs from the mark “aethos” shown on the foreign registration.  The applicant must amend the drawing so that it conforms to the mark as shown in the foreign registration.  37 C.F.R. §2.51; TMEP §§807.14, 1011.01 and 1011.03.

 

As noted in Section 807.14 of the Trademark Manual of Examining Procedure 3d:

 

In a §44 application, the drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of the mark registered in the applicant’s country of origin.”  37 C.F.R. §§2.51(a)(3) and 2.51(b)(3).  The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act.  See TMEP §1011.01.  The drawing in the United States application must display the entire mark as registered in the foreign country.  The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a distinct commercial impression. 

 

Here, the mark in the drawing is clearly a typed form mark and the mark in the registration is clearly a stylized mark. See Sect 807.06 of the TMEP 3^rd. (If the applicant wishes to include lowercase lettering in a drawing, the applicant must submit a special form drawing.  In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986)).

 

As such, the display of the mark in typed form allows the applicant use of the mark without restriction as to font or stylization. The stylized mark, however, is restricted to the display of the mark as set in special form. Not only do the physical displays of the marks differ when they are compared on their faces, but the typed form mark must be interpreted as extending to displays of the mark without the restrictions set forth in the special form drawing. As such, it cannot be said that the mark in the drawing is a “substantially exact representation” of the mark in the foreign registration.  Thus, the drawing of the mark must be amended to display the entire mark and registered in the foreign registration

 

Amendment to Identification Unacceptable

 

The applicant’s amendment to the identification is unacceptable because it contains indefinite language and incorrectly classified goods. The applicant must amend its identification to clarify the nature of its goods and properly classify the goods.

 

If accurate, the applicant may consider amending its identification and recitation to the following.

 

Class 7

 

Components and assemblies for cooling equipment and cooling systems in internal combustion engines and machinery, namely, cooling modules; oil modules; exhaust gas recirculation modules for use with machinery and vehicles; refrigerant condensors; charge air coolers; oil coolers; battery coolers; fuel coolers; power steering oil coolers; exhaust gas heat exchangers; exhaust gas recirculation valves; coolant hoses; low temperature engine coolers, namely, coolers to be used to cool below the usual temperature of the engine cooling circuit; blowers, fans and fan shrouds, fan drives, fan clutches and fluid friction clutches, all for use with engines, engine cooling systems; pumps used to pump fluids into the circuits of cooling systems and air conditioning systems; coolant pumps driven by engines; connecting lines, namely, hoses, tubes, and lines for connecting elements for fluid connection in heating, cooling, ventilation, air conditioning and climate control systems and components sold as components of such systems; cooling equipment and cooling systems comprised of one or more of the foregoing items for use with motor vehicles engines, internal combustion engines, electric motors and fuel cell engines; and replacement and structural parts for all of the foregoing, coolant pumps driven by electric motors,

 

Class 9

 

Coolant thermostats; electronics coolers, namely, cooling elements to cool electronic parts

 

Class 11

 

Heating, ventilation and air conditioning systems and climate control systems, namely, climate control 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, and replacement and structural parts therefor; headlights, vehicle reflectors, automotive air conditioners, and replacement and structural parts for all of the foregoing, air conditioners

 

Class 12

 

Land vehicle console parts, namely, dashboards, center consoles, air outlets, cross rails, wiring harnesses, air ducts and front end modules and bumpers, and replacement and structural parts for all of the foregoing

 

Class 37

 

Maintenance and repair services for others, namely, maintenance and repair of parts for motor vehicles, cooling parts and systems, ventilation parts and systems, air conditioning parts and systems, heating parts and systems and climate control parts and systems, components and assemblies for cooling equipment and cooling systems, cooling modules, oil modules, exhaust gas recirculation modules for use with machinery and vehicles, refrigerant condensors, charge air coolers, oil coolers, battery coolers, fuel coolers, power steering oil coolers, exhaust gas heat exchangers, exhaust gas recirculation valves, coolant hoses, low temperature coolers, blowers, fans and fan shrouds, fan drives, fan clutches, fluid friction clutches, engine cooling systems, and air conditioning systems, pumps used to pump fluids into the circuits of cooling systems and air conditioning systems, coolant pumps driven by engines, connecting lines, hoses and tubes for heating, cooling, ventilation, air conditioning and climate control systems and components, coolant thermostats; electronic coolers, namely, cooling elements to cool electronic parts, 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, land vehicle console parts, namely, dashboards, center consoles, air outlets, cross rails, wiring harnesses, air ducts and front end modules and bumpers. headlights, vehicle reflectors, automotive air conditioners, coolant pumps driven by electric motors, and replacement and structural parts for all of the foregoing

 

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 §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

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. 

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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