UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/639411
APPLICANT: Johnson, Larry
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: EV EXTREME VISIONS T.C. QUEENS, N.Y. " ETC.
|
|
|
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.
|
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/639411
The assigned examining attorney has reviewed the referenced application and determined the following.
No Conflicting Marks Noted
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.
Drawing
The current drawing is not acceptable because the shape on the right hand side of the mark is not clear, and the mark will not reproduce satisfactorily. Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52. TMEP §807.07(a).
The requirements for a special-form drawing are as follows:
· The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.
· Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
· The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.
· If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54.
The Office strictly enforces these drawing requirements.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch. The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809. All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.
Recitation of Services
The wording used to describe the services needs clarification because it is too broad and may include services in more than one international class. The recitation of services must list specific activities offered by the applicant under the mark. The applicant may adopt one or more of the following identifications of services, if accurate:
Providing information about electric vehicles, namely, electric trucks, in Class 39;
Organizing and conducting exhibitions and social gatherings for truck enthusiasts, in Class 41;
To indicate membership in an organization of truck enthusiasts, in Class 200.
TMEP §1402.01.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
Additional Class(es)
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810. (Current fee information should be confirmed at http://www.uspto.gov); and
(2) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
Please note that the specimen of record is not acceptable for any of the classes of services listed above.
For the applicant’s convenience, the following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by an authorized person.
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 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)
Applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq. In this case, applicant may wish to amend the application to assert a Section 1(b) basis (“intent to use”).
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b). (See declaration above.)
If the applicant maintains the Section 1(a) (“use in commerce” basis), please address the following issue. If the applicant amends the basis to Section 1(b), then no specimen is required at this time.
The current specimen of record comprises a sheet of letterhead stationery and is unacceptable as evidence of actual service mark use because it does not refer to the applicant’s services. A service mark specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56. Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services. There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.
Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09. (See declaration above.)
If the applicant adopts the language “To indicate membership in an organization of truck enthusiasts,” in Class 200, then the applicant must submit a substitute, or additional, application form. The appropriate form is entitled PTO/TM/4.8 Collective Membership Mark Application, Principal Register, and is available at www.uspto.gov, under Trademarks, Forms. If the applicant adds additional classes of services in the application, then the applicant must pay the fee for those additional classes. However, if the applicant amends the recitation to only include services in one class, no additional fee is due. If the applicant adopts on the Class 200 language, that is, for a collective membership mark, then the applicant need not pay a fee, and should indicate in its response that it is submitting a substitute application, and list the serial number of the application.
Disclaimer
Applicant must insert a disclaimer of EV, QUEENS, N.Y. ESTABLISHED 04, and 150-50 120th Ave Jamaica, NY 11434-2008 tel: 1.718.659.7181 fax: 1.718.659.6666” in the application because the terms are merely descriptive of the applicant’s services, or merely informational. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213. In any case, they do not serve a trademark or service mark function.
“EV” means “electric vehicles[1],” which describes the subject and purpose of the applicant’s services, an organization of people interested in electric vehicles, including trucks. The rest of the wording listed above merely lists the applicant’s address, telephone and fax numbers, and when it was established. The matter does not serve to identify the applicant’s services or distinguish them from those of others, which is the function of a trademark or service mark..
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
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 “EV, QUEENS, N.Y. ESTABLISHED 04, and 150-50 120th Ave Jamaica, NY 11434-2008 tel: 1.718.659.7181 fax: 1.718.659.6666” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Applicant’s Response
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Esther A. Belenker/
Trademark Examining Attorney
Law Office 111
(571) 272-9125
Fax: (571) 273-9125
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.