To: | KARMA AUTOMOTIVE. LLC (mfarjami@farjami.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 76719930 - 058T0905 |
Sent: | 9/14/2017 2:07:01 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 76719930
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: KARMA AUTOMOTIVE. LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 9/14/2017
This Office action is in response to applicant’s communication filed on July 18, 2017.
Upon further consideration of the application, the following must be addressed:
IF APPLICANT INTENDED A CONFIGURATION MARK
If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that shows the position or placement of the mark), applicant must depict such matter using broken or dotted lines. 37 C.F.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).
In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:
(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging or of a specific design feature of the goods or packaging;
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark; and
(3) Specifies any elements which are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
ORNAMENTAL ADVISORY FOR SECTION 1(b) INTENT TO USE APPLIATIONS
Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.
The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature: the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods and/or services, promotion of the applied-for mark as a trademark, and the practices of the relevant trade. See In re The Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 409-10 (C.C.P.A. 1961); In re Dimitri’s Inc., 9 USPQ2d 1666, 1668 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579, 581-83 (TTAB 1976); TMEP §§1202.03 et seq. For more information about this refusal, see http://www.gov.uspto.report/trademarks/law/ornamental.jsp.
REFUSAL MAINTAINED AND CONTINUED
Clarification of the Identification of Goods
The proposed amendment to the identification of goods is not acceptable for the reasons stated in this Office action. Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments. See TMEP §1402.07(d).
In the Office Action dated Marcy 1, 2017, the examining attorney required the applicant to clarify and amend the goods in the application and the applicant responded with an amended Identification of Goods. The proposed amendments with respect to the identification of goods cannot be accepted because the wording remains indefinite because it is a description of the mark. In addition, the identification of goods is not acceptable because applicant has used the same language to describe goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(c). Generally, identical language cannot be used to describe goods in more than one international class. TMEP §1401.05(c). For the USPTO to determine the proper classification of applicant’s goods, applicant must specify the nature of the goods or purpose for which they are being used. Id. In this case, classification would be determined by the nature of the goods or purpose for which they are being used. Thus, applicant must amend the identification to specify the nature or purpose of the goods using wording that is relevant to each designated international class. See id.
The original identification of goods read as follows:
Class 009
· Display panel for use in transportation vehicles, such as land, water
The proposed amended identification of goods now reads:
· The mark is a design of an electronic luminescent display panel for vehicles, namely automobiles, motorcycles, boats, helicopters and airplanes, which displays vehicle data and information and entertainment menus and information.
The proposed amended identification of goods is not acceptable because it is a description of the mark, rather than a clarification of the identification of goods. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01.
Applicant may consider the following suggestion:
· Electronic luminescent display panel for automobiles, motorcycles, boats, helicopters and airplanes which displays vehicle data and information and entertainment menus and information
Class 012
The original identification of goods read as follows:
The proposed amended identification of goods now reads:
As indicated above, the amendment is not acceptable as it is a description of the mark, and is repetitive of the identification in Class 009. In addition, the proposed identification of goods indicates goods not indicated in the original application. Specifically, the original identification of goods indicated “air transportation vehicles.” The proposed goods are not air transportation vehicles, but an instrument panel for many types of vehicles in addition to air transportation vehicles.
The following is suggested, if accurate:
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Trademark Examining Attorney
Law Office 105
Phone: (571) 270-1517
Fax: (571) 270-2517
caryn.glasser@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.