UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/492446
APPLICANT: STUTZ MOTOR CAR OF AMERICA, INC. WARRE L ETC.
|
|
|
CORRESPONDENT ADDRESS: WARREN LIU STUTZ MOTOR CAR OF AMERICA, INC. C/O 23832 DEL CERRO CIRCLE WEST HILL, CALIFORNIA 91304
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
|
MARK: STUTZ
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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.
|
Serial Number 76/492446
This letter responds to the applicant's communication filed on January 30, 2004. The applicant (1) clarify the entity, (2) amended the identification of goods, (3) did not submit the filing fee for goods not covered by the fee already paid, (4) clarify basis for filing as follows: use in commerce for Class 3 and 9, and intent to use for Classes 14,18,25, 32, 33 and 34, (5) continued to claim Sec 44 as a basis for filing, but did not comply with the requirements for an application based on Section 44(d), (6) only submitted specimen for Class 3, (7) claim ownership of prior registration, (8) claim Section 2(f) based on prior registrations, and (9) did not argued against the refusal to register the mark under Section 2(e)(4) of the Trademark Act.
Nos. 1 and 7 and the specimen for Class 3 are acceptable.
The proposed amendment to the identification of goods in Class 3, 9, 14, 32, 33 and 34 is acceptable.
The proposed amendment to the identification of goods in Class 18 and 25 is unacceptable.
The requirement to comply with the multiple class application requirements is continued.
The requirement to comply with the requirements for an application based on Section 44(d) is continued.
The requirement to submit specimen for Class 9 goods is continued.
The claim of acquired distinctiveness based on two prior registrations is unacceptable.
The refusal to register the mark under Section 2(e)(4) is continued.
Identification of Goods
The proposed amendment to the identification of goods in Class 18 and 25 is unacceptable as indefinite.
Class 18
The wording “leather bags” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The applicant may adopt the following identification, if accurate: Leather bags for merchandise packaging; leather shopping bags.
Class 25
The wording “clothes” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The applicant may adopt the following identification, if accurate: Men’s and women’s clothing, namely, suits, t-shirts, pants, sweaters, sport coats, casual coats, overcoats, casual shirts, dress shirts, ties, scarves, men's footwear, women's footwear, tuxedos, socks, shorts and swim suits.
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
Multiple Class Application
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
The following is a properly worded declaration under 37 C.F.R. §2.20. At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
To base the application on a foreign application for the same mark and the same goods or services, the applicant must:
(1) File a claim of priority within six months of the filing date of the foreign application.
(2) Specify the filing date and country of the first regularly filed foreign application; or state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
(3) Submit the following statement: “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.” The statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.
Trademark Act Section 44(d), 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).
The applicant seeks registration on the Principal Register under Section 2(f) by claiming acquired distinctiveness through ownership of two prior registrations. In order for applicant to claim acquired distinctiveness through ownership of prior registration, the marks have to be the same and the goods and/or services be related. In this case, the prior registrations are for both for automobiles. The instant application does not include any goods related to automobiles.
According, the refusal to register the mark under Section 2(e)(4) is continued.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Alice Benmaman/
Trademark Attorney
Law Office 116
(703) 306-7911
FX: (703) 746-8116
RESPOND AT http://www.gov.uspto.report/teas/index
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.