Offc Action Outgoing

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:

 

Second Action

 

This letter responds to the applicant's communication filed on December 23, 2009.

 

IDENTIFICATION OF GOODS AND IDENTIFICATION OF SERVICES

 

The examining attorney accepts the identification of goods and services for classes 8, 12, 26, 34, and 39.

 

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

 

Class 35

 

The applicant amended the identification of services in class 35 to "creating programs for data processing."  The examining attorney is unsure what these services are and the applicant must explain what they are.  "Data processing services" is acceptable in class 35.

 

Class 40

 

The examining attorney accepts "custom manufacture of vehicles and automotive equipment" in class 40.

 

The examining attorney apologizes but made an incorrect suggestion in the previous Office action.  The examining attorney suggested "conversion of vehicles to sports and racing cars" when the identification of services in the application was "tuning of series cars to become sports and racing cars."  The applicant may adopt the following:  conversion of series cars to sports and racing cars. 

 

The applicant should note that amending to "conversion of series cars to sports and racing vehicles" would exceed the scope of the identification of services in the application because "vehicles" is broader than "cars" (see attached fromwww.dictionary.com).  In its amendment, the applicant's identification read "conversion of vehicles to sports and racing vehicles."  The proposed amendment to "sports and racing vehicles" in the identification cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a).  Identifications 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.  Id.; see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording should be deleted from the identification.

 

CLASS 35 EXCEEDS SCOPE OF FOREIGN REGISTRATION

 

The examining attorney maintains the requirement that the applicant clarify the filing basis for class 35.

 

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:  “data processing in class 35.”  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:

 

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.

 

15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).

 

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.