UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/473975
APPLICANT: MITSUBISHI JIDOSHA KOGYO KABUSHIKI KAISH ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SPORTBACK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 229647US33
CORRESPONDENT EMAIL ADDRESS: |
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 76/473975
This letter responds to the applicant’s communication filed on December 10, 2004.
The refusal under Trademark Act Section 2(d) is withdrawn.
The Section 1(b) basis is maintained in the record in light of the following.
Registration is refused on the Supplemental Register because the proposed mark is generic for applicant’s goods. Trademark Act Section 23(c), 15 U.S.C. §1091(c); See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK for reusable ice substitute for use in food and beverage coolers held generic; even assuming a contrary holding, evidence submitted by applicant deemed insufficient to establish acquired distinctiveness); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities); TMEP §§1209.01(c) et seq.
The currently and previously attached evidence from LEXIS-NEXIS and the Internet shows that the proposed mark is generic and thus incapable of distinguishing the applicant’s goods because it indicates a type of vehicle. For example, please note the following generic use: Kia plans to bring it back to America in mid-1999 in sedan and sport-back models. Automotive News, August 10, 1998. See attached.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Mary Boagni/
Examining Attorney
Law Office 114
571-272-9130
Law Office 114 fax: 571-273-9114
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
MAIL-IT REQUESTED: FEBRUARY 27, 2005 10083K
CLIENT:
LIBRARY: MARKET
FILE: AUTNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
NOCAPS (SPORT BACK OR SPORTBACK)
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 16
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-2,6-7,10
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: BOAGNI, MARY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************07680**********************************
PAGE 1
LEVEL 1 - 1 OF 16 STORIES
Copyright 2005 Knight Ridder/Tribune Business News
Copyright 2005 Chicago Tribune
Chicago Tribune
February 20, 2005, Sunday
KR-ACC-NO: TB-NEW-CARS-20050220
LENGTH: 1839 words
HEADLINE: Chicago Tribune New Cars column
BYLINE: By Jim Mateja
BODY:
... sedan with trunk that bowed in 2004.
Some might see a styling relationship with a station wagon, but we see it
more closely associated with the hatchback Pontiac Vibe and Toyota Matrix, which
Kia does, too, by calling it a sportback and begging those who use the term
wagon to wash their mouths out with soap.
The Dodge Caliber concept, which will be unveiled at the Geneva Auto Show
next month to herald the replacement for the Neon, is another member of the
sportback crowd.
Unfortunately, while the Spectra5 is equal to Vibe and Matrix in fashionable
styling and convenient cargo access through the hatchlid, it falls short in one
important category: It's offered only in front-wheel-drive. Vibe and ...
PAGE 2
LEVEL 1 - 2 OF 16 STORIES
Copyright 2004 Financial Times Information
All rights reserved
Global News Wire - Europe Intelligence Wire
Copyright 2004 Sunday Business Post
Sunday Business Post
November 21, 2004
FT-ACC-NO: A20050105353-A398-GNW
LENGTH: 858 words
HEADLINE: HIGH ON STYLE, LOW ON EXTRAS
BYLINE: Ferdia O'Dowd
BODY:
The term 'estate' is being replaced with more inventive model descriptions
such as ' sport back', and 'sport wagon' by car manufacturers.
What was at one time regarded as a utilitarian if necessary member of the
line-up is now something associated with image and lifestyle.
A prime example of this trend is the recently-arrived Audi A3 Sport back. ...
PAGE 3
LEVEL 1 - 6 OF 16 STORIES
Copyright 2003 Crain Communications Inc.
AutoWeek
April 21, 2003, Monday
SECTION: Pg. 4
LENGTH: 730 words
HEADLINE: REALLY BIG SHEW; Even Ed Sullivan would have given props to this
year's domestically driven New York show
BYLINE: BOB GRITZINGER
BODY:
... Brat-like Baja by offering a third version of its crossover, a 210-hp,
turbocharged 2.5-liter model. Meanwhile, Mitsubishi unveils an all-new 2004
Galant sedan, a redesigned 2004 Diamante and a sportback five-door version of
the Lancer. Toyota tops off the import tank with an all-new 2004 Prius
electric/gasoline hybrid and its most American car yet, the 2004 Solara coupe
due later this year. Solara was developed in ...
PAGE 4
LEVEL 1 - 7 OF 16 STORIES
Copyright 2002 Crain Communications Inc.
AutoWeek
November 25, 2002, Monday
SECTION: Pg. 8
LENGTH: 446 words
HEADLINE: Product blitz fuels Mitsubishi makeover
BYLINE: JOHN D. STOLL
BODY:
... Evo model, Lancer's welcome in the United States has inspired Mitsubishi
to swap introduction dates for the freshened Lancer, originally slated to launch
in Japan and then come here. Instead, a higher-horsepower Lancer with ample
exterior changes-and a sportback wagon model-will come here next fall,
followed by the Japanese intro. Gagnon says the decision means Mitsubishi is
finally shifting its focus from Japan to North America.
After the redone Lancer debuts, Endeavor-an all-new midsize ...
PAGE 5
LEVEL 1 - 10 OF 16 STORIES
Copyright 1998 Crain Communications Inc.
Automotive News
August 10, 1998
SECTION: News; Pg. 32
LENGTH: 773 words
HEADLINE: S. KOREA HAS LONG LIST TO TEMPT U.S. TASTES
BYLINE: MARK RECHTIN Staff Reporter
BODY:
... wheel drive. It will be built off the Sonata platform.
KIA
Avella: The basic-small car was sold as the Ford Aspire until last year. Kia
plans to bring it back to America in mid-1999 in sedan and sport-back models.
It will be powered by a 1.5-liter engine.
Elan: The Lotus-based convertible acquired by Kia is still on America's wish
list, but federalization costs hamper the process.
Sephia: Kia's bread-and-butter ...