Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/138871

 

The Office has reassigned this application to the undersigned examining attorney. This letter responds to the applicant’s communication filed on February 3, 2003. The examining attorney has reviewed the above referenced response and determined the following:

 

The requirements regarding the identification of goods are maintained and continued.

 

Identification of Goods

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01. The issues regarding the identification of goods will be addressed in the order presented in the proposed amendment. The remainder of the identification is acceptable.

 

The wording “fittings” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant has classified the goods, “motorcycle parts, namely, […] filters for oil line pump and tank, replacement exhaust spigots, exhaust port clamps and exhaust heat shields, exhaust system mount brackets, flange bolts,” incorrectly.  The applicant must amend the application to classify the goods in International Class 7.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The applicant must clarify the period between the words, “braces” and “rear fender clamps,” in the identification of goods.  It appears that it should be a comma. TMEP §1402.01.

 

The applicant must clarify the words, “stands and stand accessories, namely, […] mounting hardware, lifts,” in the identification of goods by setting the phrase off with semicolons and stating whether the goods are kickstands.  TMEP §1402.01.

 

The wording “supports” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the intended application of the goods. TMEP §1402.01.

 

The applicant has classified the goods, “forward controls and forward control shifters, shift fork alignment gauge,” incorrectly.  The applicant must amend the application to classify the goods in International Class 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “brake line fittings, rear brake fittings,” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant must clarify the words, “rebuild kits comprising brake pad pins […], caliper anti-vibration kits, […] repair kits for stripped bleeder screws,” in the identification of goods by specifying the goods for which the kits are intended.  The goods may be in class 7 or 12 depending on what they are intended to replace. TMEP §1402.01.

 

For the applicant’s convenience, the proposed amendments in the following suggestion are in bold. The applicant may adopt the following identification of goods, if accurate:  Motorcycle parts, namely, filters for oil line pumps and tanks, replacement exhaust spigots, exhaust port clamps and exhaust heat shields, exhaust system mount brackets, flange bolts, in International Class 7. Motorcycle transmission and brake parts, namely, forward controls and forward control shifters, shift fork alignment gauges, in International Class 9. Motorcycles; structural parts, namely, upper fork brackets, front fork brackets, adjustable front fork brackets, rear forks, rear fork protector plates, chrome frame inserts, under seat frame covers, rear fender braces, rear fender clamps, slip clamps highway bars; kickstands and kickstand accessories, namely stand leg stops, stand angle plates, mounting hardware, lifts; footrest accessories, namely, footrest studs, flip up footboards, rear bumper assemblies, saddlebag guards, footrest supports, handlebar riser adaptors, riser bolts and clamp screws; shock absorber and suspension parts, namely fork slider tubes, damper rod extensions, stud nuts, and studs; transmission and brake parts, namely, main shaft thrust washers, countershaft parts and gear end washers, transmission rollers and transmission stand, throw out bearings, fill plugs with dipsticks transmission fasteners, covers and mounts, belt drives and replacement belts and pulleys, drive belt guide plates, belt drive idler bearings, belt drive replacement parts, belt drive clutches, primary drive covers, fasteners and covers, self- adjusting chain tensioners, compensating engine covers fasteners and covers, self-adjusting chain tensioners, compensating engine sprocket nuts, clutch pushrods, clutch pressure places, adjustable clutch hub retainers, hub liners and hub bearings, clutch cable adjusting sleeves, clutch and brake adjusters, hub liners and hub bearings, clutch cable adjusting sleeves, clutch and brake adjusters, clutches, disc brake hub spacers, switch housing and master cylinder cover mounting screws, front hand brake pivot pin retaining rings, brake line hardware, rear brake hardware, front brake caliper pins; brake caliper mounting pin rebuild kits comprising brake pad pins, caliper mount bushings, mounting stud, locknut and washers; brake caliper mount bushings; brake caliper anti-vibration kits comprising spring bracket and fastener, caliper covers, front brake disc covers, disc brake rotor mounting kits comprising fasteners, brake repair kits for stripped bleeder screws comprising two piece precision machined parts replacing stripped bleeder screw, brake hose kits comprising hose and compression hardware, brake pedal retaining rings, brake lever return springs, allen head power train assembly sets comprising allen head screws; fasteners, namely, knurled valve stem caps, in International Class 12.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

To the extent the suggested identification of goods or services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Applicant’s Response

 

No set form is required for response to this Office action. The applicant must respond to each point raised. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Khanh M. Le/

Trademark Attorney

Law Office 113

(703) 308-9113 x127

ecom113@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.