UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/873048

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

No Similar REGISTERED Marks Found

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Identification of Goods

The wording in the identification of goods needs clarification because it is too broad and does not adequately convey the nature of the applicant’s automotive accessories.  TMEP §1402.01.

                       

Applicant may adopt the following identification of goods, if accurate:

 

Class 012: Aftermarket styling components and accessories for automobiles made from solid billet aluminum or steel, namely, radiator grille frames, door handles, tail light guards, side vents for radiator frames, head light, tail light, and third brake covers, and fuel door plates

 

TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods 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.

 

Color Claim and Description of Mark

Applicant must specify ALL of the colors that are claimed as a feature of the mark using the following format:  “The color(s) black, blue, and white are claimed as a feature of the mark.”  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

Applicant must provide a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).  The following description is suggested:  “The mark consists of the word “FIERCE” in stylized lettering in black with a blue and white shading behind it.  The word is enclosed by a black rectangle which is formed by the head of a puma on the right side.  The head of the puma is outlined in black and has blue and white shading and white teeth and eye.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

Prior Pending Application

Information regarding pending Application Serial No. 78743745 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Applicant’s Response

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/Jessica A. Powers/

Trademark Attorney

Law Office 104

Phone - (571) 272-7183

Fax No. (571) 273-9104

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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