Offc Action Outgoing

The examining attorney notes the receipt of the May 27, 2009 correspondence. The examining attorney notes the expiration date of the foreign registration is June 30, 2019.

SEARCH RESULTS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

IDENTIFICATION OF GOODS AND SERVICES

The examining attorney accepts the identification of goods and services in classes 8, 12, 34, 35, and 39.

Class 26

The examining attorney accepts the identification of goods in class 26 with the exception of "sew on badges." The applicant must indicate the type of badge, i.e. ornamental novelty sew-on badges.

Class 40

The examining attorney accepts "custom manufacture of vehicles" in class 40. The applicant must specify the type of "equipment" it custom manufactures. "Tuning of cars" is usually in class 37. The applicant must clarify what it means by "to become sports and racing cars."

The applicant may adopt the following that incorporates the comments above:

Class 26: ornamental novelty pins, shoe laces, and ornamental novelty sew-on badges.

Class 40: custom manufacture of vehicles and [specify type of equipment]; conversion of vehicles to sports and racing cars.

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 and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services set forth in the present identification.

CLASS 35 SERVICES EXCEED SCOPE OF FOREIGN REGISTRATION

The following wording in the identification of goods and/or services in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration: “Class 35—data processing services.” See 37 C.F.R. §2.32(a)(6); TMEP §1012.

Therefore, applicant must satisfy one of the following:

(1) Amend the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

(2) Delete the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods and/or services.

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b); TMEP §806.02. If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a). If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

Although multiple-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods and/or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

Requirements for Section 1(b) Basis

An application based on a bona fide intention to use the mark in commerce must include 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 services listed in Class 35 in the application as of the filing date of the application.

15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

The following is a properly worded declaration under 37 C.F.R. §2.20. At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

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)

/Kim Saito/

Examining Attorney, Law Office 102

571-272-9214

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.