Offc Action Outgoing

FIAT

FIAT GROUP MARKETING & CORPORATE COMMUNICATION S.P.A.

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/488201

APPLICANT: Fiat S.p.A.

CORRESPONDENT ADDRESS:

G. FRANKLIN ROTHWELL, ESQ.

ROTHWELL, FIGG, ERNST & MANBECK, P.C.

SUITE 800, 1425 K STREET, N.W.

WASHINGTON, D.C. 20005

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

ecom103@uspto.gov

MARK: FIAT

CORRESPONDENT’S REFERENCE/DOCKET NO: 1228-568

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.

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 76/488201

This letter responds to the applicant’s communication filed on October 8, 2003. The intent to use basis has been deleted and the claim of prior registration is acceptable. However, upon further review by the office, the following additional requirement is made with respect to the above-referenced application:

Identification of Goods Unacceptable

The applicant has submitted portions of the class heading for International Class 9 as the identification of goods. The headings indicate the general scope of the classes. Although such broad designations are sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application. Therefore, the applicant must amend the identification to indicate the specific common commercial name of the goods. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §1401.08, 1402.01 and 1402.01(a).

/James T. Griffin/

Examining Attorney, Law Office 103

703-308-9103, ext. 126

jim.griffin@uspto.gov

(unofficial communications only)

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.