Offc Action Outgoing

Applicant must amend the wording of the standard character claim to agree with the standardized language accepted by the Office. The following is the accepted language for a standard character claim: “The mark consists of standard characters without claim to any particular font, style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a).

Applicant’s wording is incorrect because applicant merely states that “the mark be registered…as a standard character mark.”

CLASSIFICATION AND IDENTIFICATION OF GOODS

The wording in the identification of goods is indefinite and must be clarified because it is too broad and could include goods classified in more than one International Class. See TMEP §§1402.01, 1402.03. In the identification of goods, 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 applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a). If the goods have no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. It also appears that some of the goods are misclassified.

Furthermore, the identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.” See TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”

Applicant may adopt the following classification and identification of goods, if accurate:

International Class 009: AUTOMOTIVE MEASURING INSTRUMENTS, NAMELY, WATER TEMPERATURE gauges, AIR FUEL/RATIO gauges, BOOST gauges, VACUUM gauges AND EXHAUST GAS TEMPERATURE gauges.

International Class 012: Vehicles and vehicle accessories, NAMELY, after-market trucks, cars and boats, license plate frames and holders, TRAILER hitch plugs and covers, VEHICLE seat covers, bug guards FOR VEHICLES, VEHICLE grill guards, VEHICLE light covers, VEHICLE wheels and mud flaps.

Please note, although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

For assistance with identifying and classifying 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. See TMEP §1402.04.

Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application. The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services. TMEP §§1401.02, 1401.02(a). Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

MULTIPLE-CLASS APPLICATION – SECTION 1(a)

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;

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional international 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; and 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; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

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) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. 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, and (2) the original specimens are acceptable for the added class(es).

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

PLEASE NOTE: The specimens of record are acceptable for International Class 012 only.

RESPONSE GUIDELINES

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

/Mariam Aziz Mahmoudi/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 112

Tel. (571) 272-9733

Fax (571) 273-9733

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.