UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/170921
APPLICANT: Ariel Limited
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CORRESPONDENT ADDRESS: Robert Sloman Inteum Company 8826 NE 124th Street Kirkland WA WA 98034
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom112@uspto.gov
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MARK: ARIEL
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/170921
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, the applicant must address the following to enable further prosecution of this file.
The identification of goods is unacceptable as indefinite because the wording “components and accessories for passenger motor cars and motorcycles” and “components and accessories for motor cars and motorcycles for racing” does not describe the goods with sufficient clarity or with the specificity required for federal registration purposes. The applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, the applicant must describe the product and its intended uses. TMEP §1402.01. Alternatively, the applicant may delete this wording and substitute “Motorcycles and structural parts therefore and land vehicle parts, namely, {specify; e.g., transmissions, etc.}”.
The applicant may adopt the following identification of goods, if accurate: Passenger motor cars, motorcycles, motorcycles for racing; motorcycles and structural parts therefore and land vehicle parts, namely, {specify; e.g., transmissions, etc.}” in Int. Class 12.
For additional guidance, the applicant may wish to consult the Acceptable Identification of Goods and Services Manual for the United States Trademark Office which may be found at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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. Section 2.71(b); TMEP section 804.09. Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.
In addition, the applicant asserts use of the mark in commerce and asserts that it has a bona fide intent to use the mark in commerce for the same goods. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b). Therefore, in response to this action, the applicant must delete one basis or divide the goods between the two bases, as appropriate.
If the application will be based on Trademark Act Section 1(a ), the applicant is advised that the specimen does not show use of the mark for any goods identified in the application and is, thus, unacceptable. The applicant must submit a specimen showing use of the mark for the goods specified. 37 C.F.R. §2.56; TMEP §904. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging. TMEP §904.04 et seq.
The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.
Finally, the applicant must indicate whether “ARIEL” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP). The applicant may find an electronic version of the TMEP by visiting http://www.gov.uspto.report/web/offices/tac/tmep/.
Due to the technicalities involved in the federal trademark application and for specific legal advice regarding the successful prosecution thereof, the applicant may wish to hire a trademark attorney. The Patent and Trademark Office cannot aid in the selection of an attorney.
/kbp/
Kimberly Boulware Perry
Trademark Attorney, Law Office 112
phone: 703- 308-9112 x251; fax: 703-746-8112
email: Ecom112@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.