Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/548003      

 

NOTICE OF SUSPENSION

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 75-843609

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

Although applicant’s last response indicated that the above application had been abandoned, this is not the case.  It remains pending. The other two previously referenced applications have gone abandoned and are withdrawn as references.

 

SECTION 2(d) REFUSAL CONTINUED

 

The refusal to register under Section 2(d) of the Trademark Act is continued, based upon RN 2442899.

 

Applicant claims that the registrant’s goods are limited to the field of large tractors, trailers, and the like.  However, for the purpose of this application, this is not the case.  Registrant’s “vehicular air filter products, namely, filters, filter housings, ductwork, and clamps” are not limited by field in the registration itself, and thus must be presumed to cover such goods as applied to all vehicles, including motorcycles.  Nor are the air cleaners and filters for cleaning air for engines limited by field.  Note further that applicant may not attack the breadth of registrant’s coverage in this ex parte case. A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).

 

SPECIMEN ISSUE CONTINUED

 

Applicant’s latest submission includes a specimen that still does not show the mark presented in the drawing.

 

This time, the specimen shows POWER CORE (two words), as opposed to the drawing, which shows POWERCORE. 

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq; or

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.

 

37 C.F.R. §2.51; TMEP §§807.12.

 

Since applicant has already been asked for a specimen showing the mark as it appears in the drawing, this is not regarded as a new issue.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09. 

 

This case stands suspended.  Any other prior informalities not addressed above are deemed satisfied or are withdrawn.

 

 

NOTICE:  FEE CHANGE   

 

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.

 

 

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(571) 272-9318

Fax number for the Law Office: (571) 273-9106