Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 12/20/2012

Registration Number  3094596

The Sections 8 & 15 Combined Affidavit was received on November 23, 2012.  The Section 15 portion of the Combined Affidavit can be acknowledged.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

GOODS CLARIFICATION

The owner must submit a statement that clarifies the goods in the registration for which the mark is still in use in commerce.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(e)(1); TMEP §1604.09(a), (c).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

The Section 8 Affidavit of record lists goods that are different from the goods identified in the registration.  Specifically, the Section 8 Affidavit identifies the goods as “Mechanical parts for motors which are parts of machines, namely, brushes, catalytic converters, connecting rods, fan belts, and ignition wires sold as an integral component of mining machines, construction machines; mechanical parts for electric and internal combustion engines, namely, cylinder blocks, cylinder heads, main bearing caps, main bearing bolts, flywheels, crankshafts, balance weights, main bearings, crank pin bearings, piston pin bearings, thrust metals, connecting rods, connecting rod bolts, pistons, piston rings, valve seats, exhaust valves, suction valves, intake and exhaust valves, valve rocker arms, valve rotators, valve stem seals, valve guides, camshafts, fuel injection pumps, fuel injection nozzles, fuel injection valves, high-pressure fuel pipes, turbine bearings, sealing gaskets, cylinder liners sold as an integral component of all kinds of earth-moving and agricultural machinery and all kinds of vessels and land vehicles, namely, excavators, wheel loaders, combine harvesters, rice transplanters, tankers, ferries, cargo boats, passenger boats, workboats, fishing boats, aircraft, tractors, and all-terrain self-propelled tracked carriers,” and the registration identifies the goods as “Mechanical parts for motors which are parts of machines, namely, brushes, catalytic converters, connecting rods, fan belts, and ignition wires sold as an integral component of mining machines, construction machines in the nature of milling machines; mechanical parts for electric and internal combustion engines, namely, cylinder blocks, cylinder heads, main bearing caps, main bearing bolts, flywheels, crankshafts, balance weights, main bearings, crank pin bearings, piston pin bearings, thrust metals, connecting rods, connecting rod bolts, pistons, piston rings, valve seats, exhaust valves, suction valves, intake and exhaust valves, valve rocker arms, valve rotators, valve stem seals, valve guides, camshafts, fuel injection pumps, fuel injection nozzles, fuel injection valves, high-pressure fuel pipes, turbine bearings, sealing gaskets, cylinder liners sold as an integral component of all kinds of earth-moving and agricultural machinery and all kinds of vessels and land vehicles, namely, excavators, wheel loaders, combine harvesters, rice transplanters, tankers, ferries, cargo boats, passenger boats, workboats, fishing boats, aircraft, tractors, and all-terrain self-propelled tracked carriers”  The identification of goods set forth in the Section 8 Affidavit cannot be different from or broader in scope than those listed in the registration.  Omitted text shown above in BOLD would broaden the scope. 

SPECIMEN

The specimen submitted with the Section 8 Affidavit does not show the registered mark.  A Section 8 Affidavit must include a specimen showing current use of the mark for each class of goods.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(g); TMEP §1604.12(a). 

Therefore, the owner must submit the following:

(1)    A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; and

(2)    The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

PLEASE NOTE:  A substitute specimen was received on December 5, 2012, after the grace period.  Therefore, the owner must submit the required $100.00 deficiency surcharge fee.  

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The holder/owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §7.39(a)-(b).

/Dana Austin/

Dana D. Austin

Trademark Specialist

Post Registration Division

Office of Trademark Services

571-272-9536 (Voice)

571-273-9536 (Fax)

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.htm.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant.  If a registrant is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

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