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 76/536622

 

The assigned trademark examining attorney has reviewed the referenced application filed on August 12, 2003, and has determined the following.

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

The wording “scale model vehicles” and other wording in the identification of goods are  unacceptable as indefinite because the nature of the goods is unclear.  In addition, some wording is over broad in that it could be classified in more than one class of goods.  The applicant may amend this wording to the following, if accurate.  TMEP §1402.01.

 

1. Metal key holders (International Class 6). 

 

2. Turbocharger parts, namely, housings and hoods; timing belts; exhaust systems for land vehicle engines, namely, comprised of exhaust pipes, mufflers, tailpipes and mounting hardware; land vehicle engine parts, namely, oil catch tanks, oil caps, oil pans, oil pumps, grease rings, oil filters, gaskets, cam shafts, cam sprockets, crank shafts, electronic sensor adaptors sold as a unit with exhaust systems [if not sold as a unit with a class 7 good, applicant must amend the application to place these goods in International Class 9], valve springs, connecting [or exhaust] pipes, valves, elbows, pistons, fans, flanges, fan belts, hoses, head bolts, radiator caps, radiator hoses, fuel pressure regulators, air filters, universal [or coupling] joints, silencers, electronic control modules sold as a unit with exhaust systems [if not sold as a unit with a class 7 good, applicant must place amend the application to place these goods in International Class 9], spark plug wires, engine igniters, and connecting rods (International Class 7). 

 

3. ACCEPTABLE:  Computer programs for engine control, computers for engine control, electric switches, gloves for protection against accidents, and straps for radiotelephony sets (International Class 9). 

 

4. Land vehicle parts, namely, bumpers, side skirts, spoilers, wing spoilers, oil catch tanks, security harnesses of vehicle seat, seat belts, shift lever knobs, shoulder pads for security harness of vehicle seats, and steering stabilizers; structural reinforcement parts for land vehicles, namely, tension bars, tension gauges [if not sold as a unit with a class 12 good, applicant must amend the application to place these goods in International Class 9],  and tension frames; and suspension components for land vehicles, namely, shock absorbers, coil [or leaf] springs, torsion bars, and metal mountings therefor sold as a unit with [specify class 12 good] (International Class 12). 

 

5. Clocks, key holders, and watches (International Class 14). 

 

6. ACCEPTABLE:  Calendars, pens, stickers, and writing pads (International Class 16). 

 

7. Non-metal key holders (International Class 20). 

 

8. Clothing namely, aprons, gloves, caps, jumpers, jackets, liveries, namely, uniforms, motorist's clothing, namely, overalls, parkas, polo shirts, shirts, shoes, sweaters and T-shirts (International Class 25). 

 

9. Toy scale model vehicles (International Class 28). 

 

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.

 

Missing Fees for all Stated Classes of Goods

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least 9 international classes, however applicant paid the fee for only 7 class(es).

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Classification

Applicant must correct the classification of goods in the application for the referenced goods that were misclassified and amend the application to classify them in the International Class(es) shown above.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Incorrect Statement in Declaration

The applicant has used the incorrect form for its declaration under 37 C.F.R. § 2.20.  Pursuant to 37 C.F.R. § 2.33(b)(1), an application under section 1(a) of the Act must include the averment to the effect that the applicant is believed to be “the owner of the mark sought to be registered.” See TMEP Section TMEP §§804.02, 806.01(a) and 901.  The statement that the applicant is “entitled to use” the mark does not meet the requirements for a use-based application.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.32(b) and 2.33.  Applicant must, therefore, submit a substitute declaration with averments using the following format:

 

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 and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

 

Claim of Ownership

If applicant is the owner of U.S. Registration Nos. 2133939 and 2382247, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2133939 and 2382247.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 285-1184; FAX (703) 746-6228

(703) 308-9113 ext. 480 (Thurs.)

 

 

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.

 

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.