UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

PRIORITY 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: 9/22/2008

 

 

 

The following issues were discussed in communication with Michael Doland on August 26, 2008.

 

IDENTIFICATION UNACCEPTABLE - REQUIREMENT

Applicant has identified the following:

 

“Fireproof protective face masks, fire extinguishers, protective helmets, safety goggles, spectacles, spectacles frames, sunglasses, fireproof and fire-retardant garments, namely, coats, waistcoats, fireproof sport bib overalls, fireproof racing suits, jackets, jumpsuits, tracksuits, overalls, shoes, boots, overshoes and gloves, pressure gauges” in Class 009; 

 

“Automotive bumpers, automobile seat cushion, automobile spare wheel holder, automobile windshield sunshade, automobile windshields and automobile windshields, namely, windscreen, axle bearings for land vehicles, axle boot kits for use with land vehicles, axles and cardan shaft for motor vehicles, battery disconnection systems for automobiles in the nature of an electrical switch that interrupts power flow, pins to secure or release the hoods of automobiles, brake pads for land vehicles, brake shoes for land vehicles, braking systems and brake line kits for land vehicles and parts thereof, namely, brake pads, brake pistons, brake shoes, brake disks, and brake calipers, safety seat harnesses for motor cars, chain guards for motorbikes, license plate holders, front sprocket covers for motorbikes, heel guards for motorbikes, tank plug for motorbikes, stands for motorbikes, gas caps for land vehicles, gear lever/shift knobs, gear shifts, gear wheels, gear gaiters in the nature of gear shift boots, handbrake gaiter in the nature of handbrake boot, land vehicle suspension parts, namely torsion/sway bars, parking brake levers, footrest for co-driver's use in motor cars, footrest for driver's use in motor cars, safety belts for vehicles, safety belts cushions for motor cars, seat belts for use in vehicles, spoilers for vehicles, structural parts for automobiles, suspension springs for motor cars, vehicle parts namely tire warmers, vehicle parts, namely steering wheels, shock absorbers, pedals and pedal sets, vehicle chromed pedal pads, vehicle roll bars, vehicle roll cages, mud flaps for vehicles, sumpguards for vehicles; parts of vehicles, namely, spacers; quick release steering bosses; steering wheel button kits consisting mainly of shifter, horn button, wheel, pedals, pedal pads and ball bearing shafts; vehicle parts, namely suspension struts; motor car seats, subframes for motor car seats; spoilers for cars; vehicle tow bars, wheel sprockets, wheel suspension; wheels for land vehicles and wheel rims for land vehicles; window protection nets for racing vehicles” in Class 012; 

 

“Clothing, namely, body suits worn by race car drivers, bib overalls for sports; sportswear, namely, coats, waistcoats, overcoats, jackets, rainwear, slickers, raincoats, caps, hoods, balaclavas, non-fireproof face masks worn under a helmet for sweat absorption, sweaters, turtleneck sweaters, sweater vests, sweatshirts, vests, shirts, T-shirts, jumpsuits, tracksuits, overalls, pants, jeans, shoes, boots, overshoes, socks; underwear, namely, briefs, undershirts, and bottoms; gloves; hats; and sport shoes” in Class 025. 

 

Applicant classified the goods “battery disconnection systems for automobiles in the nature of an electrical switch that interrupts power flow” in International Class 012; however, the correct classification is International Class 009.  Applicant must amend the application to classify the goods in International Class 009.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant classified the goods “vehicle parts namely tire warmers” in International Class 012; however, the correct classification is International Class 011.  Applicant must either delete these goods or add International Class 011 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

Applicant may adopt the following, if accurate

 

“Fireproof protective face masks, fire extinguishers, protective helmets, safety goggles, spectacles, spectacles frames, sunglasses, fireproof and fire-retardant garments, namely, coats, waistcoats, fireproof sport bib overalls, fireproof racing suits, jackets, jumpsuits, tracksuits, overalls, shoes, boots, overshoes and gloves, pressure gauges; battery disconnection systems for automobiles in the nature of an electrical switch that interrupts power flow” in Class 009; 

 

“vehicle parts namely tire warmers” in Class 011;

 

“Automotive bumpers, automobile seat cushion, automobile spare wheel holder, automobile windshield sunshade, automobile windshields and automobile windshields, namely, windscreen, axle bearings for land vehicles, axle boot kits for use with land vehicles, axles and cardan shaft for motor vehicles, pins to secure or release the hoods of automobiles, brake pads for land vehicles, brake shoes for land vehicles, braking systems and brake line kits for land vehicles and parts thereof, namely, brake pads, brake pistons, brake shoes, brake disks, and brake calipers, safety seat harnesses for motor cars, chain guards for motorbikes, license plate holders, front sprocket covers for motorbikes, heel guards for motorbikes, tank plug for motorbikes, stands for motorbikes, gas caps for land vehicles, gear lever/shift knobs, gear shifts, gear wheels, gear gaiters in the nature of gear shift boots, handbrake gaiter in the nature of handbrake boot, land vehicle suspension parts, namely torsion/sway bars, parking brake levers, footrest for co-driver's use in motor cars, footrest for driver's use in motor cars, safety belts for vehicles, safety belts cushions for motor cars, seat belts for use in vehicles, spoilers for vehicles, structural parts for automobiles, suspension springs for motor cars, vehicle parts, namely steering wheels, shock absorbers, pedals and pedal sets, vehicle chromed pedal pads, vehicle roll bars, vehicle roll cages, mud flaps for vehicles, sumpguards for vehicles; parts of vehicles, namely, spacers; quick release steering bosses; steering wheel button kits consisting mainly of shifter, horn button, wheel, pedals, pedal pads and ball bearing shafts; vehicle parts, namely suspension struts; motor car seats, subframes for motor car seats; spoilers for cars; vehicle tow bars, wheel sprockets, wheel suspension; wheels for land vehicles and wheel rims for land vehicles; window protection nets for racing vehicles” in Class 012; 

 

“Clothing, namely, body suits worn by race car drivers, bib overalls for sports; sportswear, namely, coats, waistcoats, overcoats, jackets, rainwear, slickers, raincoats, caps, hoods, balaclavas, non-fireproof face masks worn under a helmet for sweat absorption, sweaters, turtleneck sweaters, sweater vests, sweatshirts, vests, shirts, T-shirts, jumpsuits, tracksuits, overalls, pants, jeans, shoes, boots, overshoes, socks; underwear, namely, briefs, undershirts, and bottoms; gloves; hats; and sport shoes” in Class 025. 

 

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.

 

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.

 

 

 

 

/Sean Crowley/

Trademark Attorney

Law Office 116

sean.crowley@uspto.gov

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 9/22/2008 FOR

APPLICATION SERIAL NO. 77355674

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77355674&doc_type=PAT&mail_date=20080922 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 9/22/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.