UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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  76/654512

 

The assigned trademark examining attorney has reviewed the referenced application 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 and Services

The wording used to describe the goods and services needs clarification because “bodies” is indefinite.  It is unclear from this wording as to the basic nature of applicant’s goods or services.  Applicant must amend the wording to specify the common commercial or generic name for the goods or services.  If there is no common commercial or generic name for the goods or services, then applicant must describe the nature of the goods or services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The suggested amendments are noted below in bold typeface.  Applicant may adopt any or all of the following identification of goods and services, if accurate: 

 

“Automobiles and trucks; [specify, e.g., automobile, truck, etc.] bodies, engines, clutches, brakes, safety belts, all for motor land vehicles; structural parts for motor land vehicles; tractors; electric locomotives,” in International Class 12.

 

“Automobile racing suits, t-shirts, sweat shirts, polo-shirts, ties, caps, overalls, wind resistant jackets, waterproof jackets, blazers, pullovers, coats, robes, scarves, shoes, boots, sweaters, shirts, trousers, belts, raincoats, truck suits, shorts, gloves, pajamas, slippers, swimwear, overall coats, foulards,” in International Class 25.

 

“Retail store services featuring automobiles and trucks, bodies, engines, clutches, brakes, safety belts, all for motor land vehicles, structural parts for motor land vehicles, tractors, electric locomotives, automobile racing suits, t-shirts, sweat shirts, polo-shirts, ties, caps, overalls, wind resistant jackets, waterproof jackets, blazers, pullovers, coats, robes, scarves, shoes, boots, sweaters, shirts, trousers, belts, raincoats, truck suits, shorts, gloves, pajamas, slippers, swimwear, overall coats, foulards,” in International Class 25.

 

TMEP §1402.01.

 

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.

 

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.

 

Claim of Ownership Required

If applicant is the owner of U.S. Registration Nos. 1388045, 2329080, and others, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1388045, 2329080, and others.

 

Certificate Required

Applicant must submit a copy of the foreign registration to satisfy the requirement of Trademark Act Section 44(e).  15 U.S.C. §1126(e).  If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

The application does not presently contain a copy of the foreign registration.  An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration or a registered extension of protection of an international registration from the applicant’s country of origin.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin.  TMEP §§1004 et seq. and 1016.

 

Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

Option to Delete Basis

Applicant must advise the trademark examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration.  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.

 

Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.

 

 

/Carrie Achen/

Examining Attorney

Law Office 115

Phone:  (571) 272-8378

Fax:  (571) 273-9115

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.