UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/618896
APPLICANT: THE YOKOHAMA RUBBER COMPANY LIMITED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ADVAN
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CORRESPONDENT’S REFERENCE/DOCKET NO: IPS-0233
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.
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Serial Number 76/618896
The assigned examining attorney has reviewed the application and notes the following:
Information is enclosed concerning pending Application Serial No. 79004434. Although 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), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application. The filing date of the referenced application precedes applicant’s filing date. If the earlier‑filed application registers, registration may be refused under Section 2(d). 37 C.F.R. §2.83. Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.
Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §§2.52, 2.53(c) and 2.54(e). The current drawing is not acceptable because, as currently rendered, the quadrilateral designs blend in with the letters VAN making the letters difficult to discern, and the designs themselves fade at the edges, making it so the drawing as a whole will not reproduce satisfactorily.
The identification of goods is unacceptable as indefinite. Class 14 key rings must be “of precious metal.” Class 16 rulers must be clarified as drawing, drafting or ungraduated. Applicant must clarify the nature of the sportswear and working wear. Applicant must specify whether the badges are metal, paper or plastic and classify them accordingly. Applicant must clarify that the emblems are embroidered. The common commercial name of the toys and smokers’ articles must be provided. Applicant may adopt the following identification of goods, if accurate. TMEP §1402.01.
“Metal name badges, in International Class 6.”
“Automobile tires; wheel rims and wheels for automobiles, in International Class 12.”
“Key rings of precious metal, clocks, watches, tie clips, tie pins and cuff links, in International Class 14.”
“Pocket memorandum books, note books, writing pads, envelopes, pencils, felt writing pens, mechanical pencils, ballpoint pens, fountain pens, rubber erasers, underlays for writing paper, [clarify “drawing,” “drafting,” “ungraduated”] rulers, stickers, pen cases, paperweights, and paper knives; paper name badges, in International Class 16.”
“Umbrellas; parasols, in International Class 18.”
“Chairs; plastic name badges, in International Class 20.”
“Towels of textile, in International Class 24.”
“Ponchos; down coats; working wear, namely, [specify, e.g., “overalls”]; sweat shirts; jumpers; parkas; belts; sport shoes; special sportswear, namely, [specify, e.g., “jerseys”]; special sport footwear, in International Class 25.”
“Embroidered emblems, in International Class 26.”
“Toys, namely, [specify, e.g., “action figures”], in International Class 28.”
“Smokers’ articles, not of precious metal, namely, [specify, e.g., “ashtrays”], in International Class 34.”
“[specify, e.g., ammunition, grocery, carry-all, laundry, ski, etc.] bags, in International Class 00” [class to be determined by the nature of the bags].
“[specify, e.g., cartridge, watch, felt, pipe, etc.] pouches, in International Class 00” [class to be determined by the nature of the pouches].
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 www.gov.uspto.report/web/offices/tac/doc/gsmanual/. As set forth in the TMEP, this manual "contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney." TMEP sec. 1402.04.
Please note that, while the identification of goods or services may be amended to clarify or limit the goods or services, adding to the goods or services or broadening the scope of the goods 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 or services that are not within the scope of the goods or services set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods 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 or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
CLAIM OF OWNERSHIP
The applicant must submit a claim of ownership of pertinent prior registrations. 37 C.F.R. Section 2.36; TMEP section 812. The applicant may use the following form for the claim of ownership:
“The applicant is the owner of U.S. Registration Nos. 2915212 and 2001737.”
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.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/John M. Gartner/
Trademark Examining Attorney
Law Office 102
(571) 272-9255
HOW TO RESPOND TO THIS OFFICE ACTION:
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.