UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

IDENTIFICATION OF GOODS - PARTICULAR WORDING TOO BROAD 

 

The wording “assemblies and components” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

Applicant may adopt one or more of the following amended identification of goods, if accurate:

 

In IC 012:        Land vehicle suspension systems and shock absorbers

 

In IC 012:        Land vehicle suspension components, namely, torsion/sway bars 

 

In IC 012:         Land vehicle suspension components, namely, coil springs 

In IC 012:         Land vehicle suspension components, namely, leaf springs 

 

In IC 012:         Land vehicle suspension components, namely, equalizers 

 

In IC 012:         Land vehicle components, namely, suspension struts 

 

 

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.

 

Identifications of goods can be amended only 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.

 

Applicants may request that an identification be added to the "US Acceptable Identification of Goods and Services Manual" by sending an email to the Administrator of Trademark Identification, Classification and Practice, at: TMIDSUGGEST@uspto.gov

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

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).

 

 

STANDARD CHARACTER DRAWING 

 

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  See 37 C.F.R. §2.52(a); TMEP §807.03(a).

 

A standard character drawing shows the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color.  37 C.F.R. §2.52(a); TMEP §807.03(a).  A registration for a mark in standard characters affords protection not only for the mark as it appears in standard characters, but also for any possible renderings of the mark, as long as those renderings do not contain any design elements.  In other words, a registered mark in standard characters provides protection of the mark in any lettering style.  See 37 C.F.R. §2.52(a); TMEP §807.03(a).

 

A special form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

 

MARK DIFFERS ON DRAWING AND SPECIMEN

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark in a different font than that which appears on the drawing page.

 

The mark on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).

 

Therefore, applicant must submit one of the following:

 

(1)     A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark.  See 37 C.F.R. §2.72(a); TMEP §§807.12(a), 807.14 et seq.; or

 

(2)   A substitute specimen showing use in commerce of the mark on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  See 37 C.F.R. §2.59(a); TMEP §§807.12(a), 904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05; or

 

(3)   A standard character drawing claim, as explained above.

 

 

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “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.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

 

GENERAL INFORMATION AND STATUS OF APPLICATIONS

 

Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations.  To access the TARR database, applicant will need to provide an application serial number or registration number.  The TARR database is available 24 hours a day, 7 days a week. If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center at 571-272-9250 and request a status check.

 

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (5th ed. 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm.  The TMEP is a detailed administrative manual written by the Office to explain the laws and procedures that govern the trademark/service mark application, registration and post registration processes. The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act of 1946, 15 U.S.C. §§1051 et seq.; The Trademark Rules of Practice, 37 C.F.R. Part 2; and the Office’s Trademark Manual of Examining Procedure (TMEP) (5th ed. 2007).  These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.

 

 

 

 

/Monique C. Miller/

Trademark Attorney

Law Office 109

(571) 272-9347 (phone)

fax number for Law Office 109:

(571) 273-9109

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.