Examiners Amendment Priority

TO AVOID PARTIAL ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

PRIORITY ACTION

DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).

ISSUES APPLICANT MUST ADDRESS: On July 28, 2010, the trademark examining attorney and Charles LaPolla discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

Applicant Improperly Identified the Goods In International Classes 012, 016 and 025

The applicant has provided this Office with the following identification:

Vehicles, in International Class 012;

Printed matter, in International Class 016;

Luggage, in International Class 018;

Clothing, in International Class 025; and

Vehicle rental services, in International Class 039.

The wording “vehicles” in International Class 012, “printed matter” in International Class 016 and “clothing” in International Class 025 in the recitation of goods is unacceptable as indefinite and must be clarified. TMEP §1402.01. Based on the applicant’s description, the examining attorney cannot determine the types of vehicles, the nature of the printed matter and subject matter thereof, and the kinds of clothing articles. The language the applicant used fails to adequately describe these products such that the average person would readily understand what the goods are.

The applicant must amend the recitation to specify the common commercial name of the goods. If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s).

PLEASE NOTE: The applicant’s identification of goods for International Class 018 and recitation of services for International Class 039 are both acceptable as currently written and made part of the application.

The applicant may amend the identification to substitute the following wording, if accurate:

Proposed identification for International Class 012:

Vehicles, namely, _______________ [applicant must identify the good using its common commercial name e.g. automobiles, trucks, busses, motorcycles, airplanes].

Proposed identification for International Class 016:

Printed matter, namely, _______________ [applicant must identify the good using its common commercial name as well as the subject matter thereof e.g. printed pamphlets in the field of ____________ (applicant must identify the subject matter of the publication e.g. automobiles, travel), printed road maps, printed magazines in the field of ____________ (applicant must identify the subject matter of the publication e.g. automobiles, travel)].

Proposed identification for International Class 025:

Clothing, namely, _______________ [applicant must identify the good using its common commercial e.g. shirts, dresses, hats, socks, shorts, jackets].

PLEASE NOTE: An applicant may amend an identification of goods or recitation of services 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 et seq.

An applicant may amend an identification or recitation from the more general to the specific; it may not amend from the specific to the more general. TMEP §§1402.06(b). The scope of the goods and/or services identified in the initial application, or as limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07 et seq. Therefore, the applicant may not amend the identification to include any product or services that are not within the scope of the goods and/or services originally set forth in the in application or a previously accepted amendment thereto.

Online Identification Reference Provided By The USPTO

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.

ADVISORY NOTICE: Failure To Respond—Abandonment Of Specific Goods and/or Services

If the applicant does not respond to this Office action within the six-month period for response, then the following goods will be deleted from the application:

Vehicles, printed matter, clothing.

The application will then proceed with the following services only. 37 C.F.R. §2.65(a); §718.02(a).

Partial abandonment identification for International Class 018:

Luggage.

Partial abandonment identification for International Class 039:

Vehicle rental services.

EXAMINER'S AMENDMENT

APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

Mark Description Statement

The application is amended as follows:

The mark consists of the stylized word "HERTZ".

Statement Concerning The Applicant

The applicant notes that it is a wholly owned subsidiary of The Hertz Corporation. TMEP §§1201.03(c), 1201.07(b)(i).

Claim Of Ownership Of Prior Registrations

The application is amended to read as follows:

Applicant is the owner of U.S. Registration Nos. 0614123, 3766548, 0972211, 1230391, 2830130 and others.

Section 2(f) Claim

Consistent with other single-term marks owned by the applicant, the application is amended to claim acquired distinctiveness under Section 2(f) based on the applicant’s prior registrations. TMEP §1212.04

The mark has become distinctive of the goods and services as evidenced by ownership of U.S. Registration No(s). 1230391, 0972211 and 2830130 on the Principal Register for the same mark for the same or related goods or services.

Applicant’s Response

There is no required format or form for responding to an Office action. In its response, the applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The Office highly recommends that the applicant file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

In any response or correspondence with the Office, the applicant should include the following information: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance 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).

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. If applicant retains an attorney, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The individual(s) signing must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. In such case, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

If the applicant or its appointed attorney have any questions or need assistance in responding to this Office action, please telephone the assigned examining attorney.

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 117

Telephone: 571-272-9706

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.