Offc Action Outgoing

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  76/609821

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §1105.01.  However, the applicant’s mark is refused for the reasons set forth below.

 

Primarily Merely a Surname

Registration is refused because the proposed mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq.  The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname.  In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).

 

The examining attorney must consider the following five factors in determining whether a mark is merely a surname: 1) the rareness of the surname: 2) whether anyone connected with the applicant has the mark as his/her surname; 3) whether the term has any recognized meaning other than as a surname; 4) whether the mark has the structure and pronunciation of a surname; and 5) whether the mark is sufficiently stylized to remove its primary significance from that of a surname.  TMEP §1211.02(b).  See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) and cases cited therein.

 

CARRERA is a common surname as is evidenced by the surname listings from the internet.  Additionally, CARRERA has the structure and pronunciation of a surname, such as Carrero.  Stylization is not an issue in this application because the mark is in standard characters.  Based on the foregoing, the applicant’s mark is primarily merely a surname.  Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Supplemental Register

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

The following is a brief description of the differences between the Principal and Supplemental Registers.  The Principal Register offers prima facie evidence of:

 

                1.  validity of the registration;

                2.  registrant's ownership of the trademark;

                3.  exclusive right to use the trademark in commerce;

                4.  “incontestability" after five years registration (stops attacks based on prior

                descriptiveness of the trademark);

                5.  constructive notice of registrant's claim of ownership;

                6.  nationwide rights in the trademark;

                7.  right to bring suit in federal court regardless of jurisdictional diversity;

                8.  statutory remedies;

9. ability to prevent importation of goods bearing an infringing trademark by depositing the registration with the customs office; and,

                10.  rights under the Paris convention.

 

These presumptions do not apply to registration on the Supplemental Register.  This is because a trademark on the Supplemental Register is merely considered "capable" of being a trademark -- there has been no determination that it is a trademark.  Nevertheless, registration on the Supplemental Register does permit:

 

                1.  use of the federal registration symbol "®";

2.  use of the trademark as a bar to registration of confusingly similar trademarks filed by others;

                3.  registration abroad based on U.S. rights; and,

                4.  registrant may bring suit in federal court.

 

 

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification and Classification

The identification of goods is unacceptable as indefinite because it does not describe the goods with sufficient specificity; the applicant must list the contents of the system.  In the identification of goods, the applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

If there is no common commercial or generic name for the goods, then the applicant must describe the goods, the intended consumer of the goods, and the main purpose and intended uses of the goods.  TMEP §1402.01. [1]

 

However, the applicant may adopt the following identification of goods, if accurate:

 

Vehicle lighting, namely, accessory headlight systems for off-road recreational vehicles consisting of [list the major parts of the system and describe the nature and use of the system, e.g., headlights and mounting brackets.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.], all sold as a unit, in International Class 11.

 

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.

 

Request for Information

The applicant must directly answer the following question(s) pursuant to the authority granted the examining attorney by 37 C.F.R. §2.61(b) if it does not amend the application to seek registration on the Supplemental Register and/or disclaim the specified wording as required by the examining attorney:

 

Is CARRERA a surname?

 

Please note that failure to fully comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

Drawing

The Office no longer accepts “typed” drawings and the applicant did not make a standard character claim.  Exam Guide 01-03, section I.A.9.  Therefore, the applicant must add a standard character claim.  The applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a). 

 

Please note that new trademark rules went into effect on November 2, 2003.  Please refer to http://www.gov.uspto.report/web/offices/tac/notices/examguide1-03.htm for guidance on the new trademark rules.

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays.

 

Copies of Documents 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

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.

 

/Brian J. Pino/

Examining Attorney

Law Office 114

571.272.9209

571.273.9114 Law Office Facsimile

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.