UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/598411
APPLICANT: HONG, JOSEPH
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: GRAND MOTORS
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/598411
The assigned Examining attorney has reviewed the referenced application and determined the following.
1. Information: No Similar Marks
The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, the applicant must respond to the following requirements.
2. Requirement: Disclaimer
Applicant must insert a disclaimer of MOTORS in the application because the word is descriptive of the applicant’s goods. See attached dictionary definition. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “MOTORS” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
3. Requirement: Correct Identification of Services
The applicant must correct several items listed in the identification of services.
a. as to car sales
The wording “car sales” in the identification of services needs clarification because it does not specify the common commercial name of the services. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01. Applicant may adopt the following identification, if accurate: Automobile http://atlas/netacgi/ - h1http://atlas/netacgi/ - h3dealerships, in International Class 35. TMEP §1402.01.
b. as to car rental services
Applicant must correct the classification of car rental services in the application and amend the application to classify them in International Class 39. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
4. Requirements for Multiple Class Applications
Where an application is based on use of the mark in commerce, applicant must satisfy the following requirements:
(1) Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”
(2) Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;
(3) Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and
(4) Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce). If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”
These requirements must be verified by applicant in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).
If applicant adds any classes, then applicant must submit a specimen showing use of the mark for each new class. 37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01. Applicant must also submit a statement that "the new specimen was in use in commerce on or before the application filing date," verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a). If the new specimen is the same as the specimen(s) already of record, then applicant need not verify the date of use.
Applicant must amend the application to include dates of first use and use in commerce for each class of goods and/or services. 37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, then applicant must verify the new dates with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP 903.05.
To maintain car rental services in class 39, applicant must comply with each of the items above for the additional class.
5. Requirement: Clarify Number of Classes in the Application
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 two international classes, however applicant paid the fee for only one class.
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.
6. Requirement: Standard Character Claim
The Applicant has not submitted a claim for a standard character drawing. As detailed in Exam Guide No. 1-03 issued October 30, 2003 and effective November 30, 2003, which can be viewed at http://www.gov.uspto.report/web/offices/tac/notices/examguide1-03.htm.
Applicant must submit the following standard character claim:
“The mark is presented in standard characters without claim to any particular font style, size, or color.”
37 C.F.R. §2.52(a).
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.
/Joanna M. Dukovcic/
Trademark Examining Attorney
Law Office 103
Phone: (571) 272-9707
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.