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  76/585158

 

The assigned trademark examining attorney has reviewed the referenced application filed on April 6, 2004, 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 for International Class 11

The wording “12 volt accessories, namely lights, bulbs” in the identification of goods is unacceptable as indefinite because it does not clearly indicate the goods.  The applicant may amend this wording to “12 volt accessories, namely light bulbs,” if accurate.  TMEP §1402.01.

 

Applicant must correct the classification of the goods “12 volt extension cords” in the application and amend the application to classify them in International Class 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “12 volt sockets” in the identification of goods needs clarification because it does not sufficiently indicate the specific type of sockets.  Applicant may change this wording to “12 volt sockets for electric lights,” if accurate.  TMEP §1402.01.

 

The wording “12 volt outlets” in the identification of goods needs clarification because it does not sufficiently indicate the specific type of outlets.  Applicant may change this wording to “electrical outlet plates, in International Class 9,” or “electrical outlet covers, in International Class 9,” if accurate.  TMEP §1402.01.  If applicant adopts the suggested amendment of the goods, then applicant must amend the classification of these goods to International Class 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

Identification of Goods for International Class 12

The wording “valve caps” in the identification of goods needs clarification because it does not indicate the specific type of valve caps.  Applicant may change this wording to “vehicle tire valve stem caps,” if accurate.  TMEP §1402.01.

 

Identification of Goods for International Class 16

Applicant must correct the classification of the goods “clocks” in the application and amend the application to classify them in International Class 14.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The identifications for International Classes 6, 9, 20 and 22 are acceptable as written.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

Requirements for Multiple Class Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

THE REQUIREMENT TO AMEND THE IDENTIFICATION APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  12 volt accessories, namely lights, bulbs; 12 volt sockets; 12 volt outlets; valve caps.  The application will then proceed forward for the following goods only: 37 C.F.R. §2.65(a).

 

Class 6: Metal items, namely, tie downs, key chains and key clips.

 

Class 9: Compasses, thermometers and fuses; 12-volt extension cords.

 

Class 11: Lights for vehicles, namely, map lights.

 

Class 12: Mirrors for vehicles, namely, rearview and vanity

mirrors; license plate fasteners.

 

Class 14: Clocks.

 

Class 20: Non-metal key chains and non-metal key clips.

 

Class 22: Non-metal tie downs.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.  To reach the undersigned attorney by telephone after October 19, 2004, please call (571)-272-9708.  Thank you.

 

 

 

/Mark V. Sparacino/

Trademark Attorney

Law Office 103

703-308-9103 ext 292

 

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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.