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  76/472569

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Prior Pending Application

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/145728.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

 

 

 

Identification of Goods

 

International Class 1

 

The wording “octane booster; fuel chemical additives” in the identification of goods is unacceptable as indefinite because the semi color should be deleted after the wording “booster” and before the wording “fuel.”  The applicant may amend this wording to “octane booster fuel chemical additives,” if accurate.  TMEP §1402.01.

 

The wording “degreasing preparations used in the manufacturing processes, for engines” in the identification of goods is unacceptable as indefinite because the comma should be deleted after the wording “processes.”  The applicant may amend this wording to “degreasing preparations used in the manufacturing processes for engines,” if accurate.  TMEP §1402.01.

 

International Class 3

 

The wording in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Automotive cleaning preparations, namely, carburetor, intake valve, fuel injector and choke cleaners; brake cleaners; degreasing preparations not used in the manufacturing process for use on engines,” if accurate.  TMEP §1402.01.

 

However, “Non-chemical engine treatments and additives for engine oils, gasoline and diesel fuels, transmission fluids and cooling systems” are goods that are properly classified within International Class 4.  TMEP §1402.01. 

 

International Classes 4 and 16

 

Please note, the goods identified within International Classes 4 and 16 are accepted by the examining attorney. 

 

Additions Not Permitted

 

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 the goods or services recited in the present identification.

 

Substitute Specimens Required

 

International Class 4

 

The specimen is unacceptable as evidence of actual trademark use because the specimen does not show the use of the mark for any of the goods identified within International Class 4.  The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq. 

 

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.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

International Class 16

 

The specimen is unacceptable as evidence of actual trademark use because it appears to be advertisements for the goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq. 

 

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); TMEP §904.09.

 

International Classes 1 and 3

 

Please note, the specimens submitted for International Classes 1and 3 are accepted by the examining attorney. 

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

__________________________

/Judy Grundy/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 296

(703) 746-8106 fax number

ecom106@uspto.gov (official responses)

judy.grundy@uspto.gov (non-responsive questions)

 

 

 

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.