Offc Action Outgoing

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  76/518420

 

This application was withdrawn from publication because of a problem with the recitation of services, as follows.

 

WARRANTY IS NOT A SERVICE

 

A warranty or guarantee that is not separately offered, promoted or charged-for, is not sufficiently separate from the sale of goods to constitute a registrable service.  In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980); In re Lenox, Inc., 228 USPQ 966 (TTAB 1986); TMEP §1301.01(b)(ii).

 

Registration is refused because the activities recited in the description of services are not “services” as contemplated by the Trademark Act.  Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; TMEP §§1301.01 et seq.  Specifically, the description of services identifies the following activities: “Providing warranty programs for pre-owned motor vehicles”.  These activities do not constitute a service because clearly applicant is warranting the working condition of its own used vehicles.

 

The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than applicant; and (3) a service is not merely an ancillary activity or one which is necessary to the applicant’s larger business.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

 

When the applicant warrants its own goods for sale, then it is felt to be an “ancillary activity.” This is also true of “advertising services” which turn out to be advertising the applicant’s goods. It is considered a part of doing business. One advertises to promote the goods, one warrants them to reassure consumers that they will get a quality product or if any problems arise, they will be resolved at no cost to the consumer.

 

An “extended warranty service” is one where the consumer pays an extra fee for service problems that might arise over time. Providing an “extended warranty” is considered by the Office to be a service to others.

 

EXPEDITED COMMUNICATIONS

 

The most expeditious way to resolve goods and services descriptions and disclaimer issues is by e-mail that allows for back-and-forth discussion between applicant and examining attorney without the 6-month intervals of mail or the irritation of telephone tag. Substitute specimens and declarations are best done by fax, as are domestic representative appointments, revocations and the like. The examining attorney’s personal numbers are:

 

Tel. 703-308-9114 Ext. 433

Fax: 703-746-6267

E-Mail:  jill.alt@uspto.gov

 

In order to submit formal responses by E-Mail, applicant must give written consent to be an electronic correspondent and set forth its E-Mail address. The signature, to be valid, must be typed between two forward slashes, as below.

 

 

/Jill C. Alt/

Trademark Attorney

Law Office 114

Tel. (703) 308-9114 Ext.433

Fax: (703) 746-8114

E-Mail: ecom114@uspto.gov

 

 

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.