Offc Action Outgoing

This letter responds to the applicant’s communication, filed in this Office on October 19, 2004, in which the applicant: (1) amended the identification of goods; (2) claimed ownership of a prior registration; (3) responded to the specimen requirement by submitting a declaration of bona fide intent to use in order to amend to a Section 1(b) basis; and (4) argued against the Section 2(d) refusal and potential refusal based on two pending applications.

The claim of ownership is acceptable and has been made of record.[1] Moreover, the examining attorney has reviewed the amended identification of goods and the applicant’s arguments against the Section 2(d) refusal, and finds that the refusal and potential refusal may be properly withdrawn as to the cited registration and the two pending applications. While consumer confusion is possible between the marks, the examining attorney finds that in light of the amended identification of goods, there is no longer a likelihood of such confusion.

With regard to the amended identification of goods, the examining attorney finds that the applicant’s amendment exceeds the scope of the original wording, and is therefore unacceptable without further clarification, as discussed below. In addition, the declaration to support the amendment to the Section 1(b) basis must also be further amended in order to be acceptable. This issue is discussed in the following section, and this action is non-final in nature in light of the new issue.

Amendment to Section 1(b) Basis – Declaration Statement re Bona Fide Intent to Use

The applicant responded to the specimen requirement by amending to a Section 1(b) basis, supported by a signed declaration as to the fact that the applicant has a bona fide intent to use the applied-for mark in commerce in connection with the identified goods.

However, where the applicant is amending from a Section 1(a) basis to a Section 1(b) basis, the applicant’s verified statement must attest to the fact that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.03(c). In other words, the statement regarding the applicant’s bona fide intent to use must relate back to the filing date of the application in order to be acceptable.

Accordingly, the applicant must submit a new declaration that includes the required statement concerning the applicant’s bona fide intent to use the mark in commerce as of the application filing date. The following standard language will be acceptable:

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 applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application; 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)

Identification of Goods – Requirement Continued – Amendment Exceeds Scope

The original identification of goods read as follows: “automotive service equipment, namely, trouble lights, hydraulic jacks, jack stands, creepers, tool boxes and tool trays.” In response to the initial Office action, the applicant has amended the identification to read as follows, in its entirety: “maintenance lights, namely trouble lights,” in Class 11.

The examining attorney has reviewed the applicant’s amendment, and finds that while the reference to “trouble lights” may be accepted in Class 11,[2] the current wording exceeds the scope of the original identification – which was clearly limited to “automotive service equipment.”

As noted in the initial Office action, an application may be amended to clarify or limit the identification, but additions to the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 1402.06. Accordingly, the applicant must further amend the identification of goods to specify the fact that the identified goods are for use in the automotive industry. For example, any of the following would be acceptable in Class 11:

Automotive maintenance lights, namely trouble lights

Automotive service equipment, namely trouble lights

Maintenance lights for use in connection with automobile maintenance, namely trouble lights

Pending a response by the applicant that further amends the identification to remain within the scope of the original wording, the requirement for an acceptable identification of goods is hereby continued.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Elizabeth A. Hughitt/

Examining Attorney

Law Office 111

(571) 272-9384

How to respond to this Office Action:

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

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

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.

[1] Updated Office records show that this prior registration has been recently cancelled for failure to file the required Section 8 affidavit of continuing use. However, the registration was a live registration as of the issuance of the initial Office action and the applicant’s response, so that no withdrawal of the ownership statement is necessary.

[2] It is noted in this regard that the initial Office action discussed the wording “trouble lights” in terms of Class 9 emergency warning lights, under the mistaken assumption that the applicant intended to identify such goods. The examining attorney has confirmed that the wording “trouble lights” is in common use in the electrical lighting industry to refer to portable work lights, which would be properly classified in Class 11.