UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION (PROVISIONAL REFUSAL)

 

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

 

79/001133

 

The assigned trademark examining attorney has reviewed the referenced application filed on December 23, 2003, and has determined the following.

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods/Services

 

Some wording in the identification of goods needs clarification because the nature of the goods and/or services is unclear.  Applicant may change this wording to the proposed wording below, if accurate.  TMEP §1402.01.  In addition, applicant’s use of parentheses is prohibited. TMEP § 1402.12.  The identification of goods also needs clarification because applicant uses the wording “including.”  The identification of goods must be specific and all-inclusive.  Applicant should amend the identification to replace this wording with "namely."  Please note that applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).  Finally, “playing cards” have been deleted from International Class 16 because they are properly classified in International Class 28.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

1. Motors other than for land vehicles, namely, [specify type of motors, e.g., direct current motors, boat motors, electric starter motors, electric motors for machines (etc.)] and including their parts, including namely, [specify, e.g., motor starters, machine cylinders, machine cylinder heads, machine pumps, camshafts, pistons, fly wheels, bearings, valves, exhausts for engines, injectors for engines, carburetors for engines filters for cleaning cooling air, glow plugs for diesel engines, engine blocks, intake and exhaust manifolds, camshafts, cylinders, (etc.)], filters for cleaning cooling air for engines, and glow plugs for diesel engines; machine coupling and transmission components (except not for land vehicles, ) including clutches for machines, not other than for land vehicles, jacks for machines, namely, hydraulic and power-operated jacks; agricultural implements other than that are not hand-operated, namely, [applicant must specify, e.g., seed drills, incorporators, cultivators, harvesters, disk harrows, seeders, mechanized livestock feeders, power-operated agricultural implements for attachments to tractors and harvesters, (etc.)] (International Class 7). 

 

2.      Apparatus for locomotion by land, air or water including vehicles, namely,  [specify, e.g., automobiles, trucks, vans, sport utility vehicles, lorries, trailers, busses, trains, locomotives, bicycles, tricycles, unicycles, motorcycles, snowmobiles, airplanes, boats and ships, hot air balloons and dirigibles, camping trailers, folding and hard side truck camping trailers, motor homes, conversion vans, travel trailers, camper coaches, (etc.)] and their structural and replacement parts; engines for land vehicles (International Class 12). 

 

3.      Goods made from paper and cardboard included in this class, namely, [specify common commercial names of these goods, e.g., calendars, boxes of paper or cardboard, packing cardboard, bond paper, art paper, (etc.)]; printed matter, namely, [specify, e.g., atlases and geographical maps, books and printed instructional and teaching materials in the field of science and technology, (etc.)]; stationery; typewriters, pens and office articles not including furniture, namely, [specify, e.g., office hole punchers, glues for the office, punches, rubber bands, (etc.)]; ball-point pens and pencils, paper flags (of paper), and table napkins of paper playing cards (International Class 16).  

 

4.      Games and playthings, namely, [specify, e.g., toy building blocks; building games; board games, namely, checkers, (etc.)], scale model vehicles and scale model cars; gymnastic and sporting articles, namely, included in this class, including, especially [specify, e.g., gymnastic horizontal bars, gymnastic parallel bars, gymnastic training stools, gymnastic vaulting horses balls, (etc.)], plush toys, apparatus for electronic games other than those adapted for use with television receivers only, namely, [specify, e.g., arcade-type electronic education video games, electronic dart games, and hand held unit for playing electronic games] (International Class 28). 

 

5. Advertising, namely, [specify, e.g., direct mail advertising; electronic billboard advertising; television advertising agencies; advertising agencies, namely, promoting the services of automobile dealerships, banks, through the distribution of printed and audio promotional materials and by rendering sales promotion advice; advertising agencies; cooperative advertising; providing television advertising for others; dissemination of advertising for others via an on-line electronic communications network; dissemination of advertising matter, for others disseminated via printed publications, radio, television, and an on-line communications network; providing advertising space in a periodical, (etc.)]; business management; business administration and office work; including personnel recruitment, personnel management consultancy, business management consultancy, public relations, organization of trade fairs for commercial or advertising purposes (International Class 35). 

 

6.      Insurance, namely, including health insurance underwriting, insurance brokerage, accident insurance underwriting; financial affairs services and monetary affairs, namely, including issuance of credit cards, banking, loan financing, installment loans, credit bureaus, financial consultancy, hire-purchase financing, saving banks, and installment loans; real estate affairs, namely, including apartment house management, real estate management, real estate appraisal, rental of offices space (real estate), renting of apartments flats, real estate agencies, apartment locators accommodation bureaux (apartments), leasing of real estate (International 36). 

 

7.      Repair and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service; cleaning, repairing, maintenance and varnishing polishing of vehicles (International Class 37). 

 

8. Telecommunication services, namely, [specify common commercial name of services, e.g., providing telecommunications connections to a global computer network; telecommunications air time brokerage services; telecommunications gateway services; providing Internet gateways; ISDN services; personal communication services, (etc.)]; news agencies, namely, gathering and dissemination of news; electronic mail, and rental of telecommunications equipment (International Class 38). 

 

9.      Transportation services, namely, including emergency truck or auto towing, taxi transport, car transport, arranging of travel tours, rental and leasing of vehicles, especially automobiles, transport of people, especially namely, [specify means, e.g., by motor buses, by airplane, by train, by ferry, (etc.)] (International Class 39). 

 

10.  Material treatment, namely, including [specify, e.g.,  waste treatment (transformation), metal treatment, treatment of wood, plastics, concrete, ceramics, (etc.)] (International Class 40). 

 

11.  Teaching in the fields of [specify, e.g., science and engineering]; providing educational information in the field of [specify field]; entertainment in the nature of live musical groups, television comedy series, ethnic festivals;; sporting and cultural activities, namely, including arranging and conducting of conferences, congresses, symposiums, and organization of exhibitions for cultural or educational purposes in the fields of [specify, e.g., science and engineering]; providing cinema facilities, presentation of live show performances, providing museums facilities (presentation, exhibitions), entertainment in the nature of orchestra performances services, organization of sport competitions, gaming services, namely, leasing of casino and electronic gaming machines and providing casino facilities (International Class 41).

 

12.  Consultancy in the field of computer hardware; rental of computer software, computer rental, legal services; scientific and industrial research in the field of [indicate specific field, e.g. petrochemical production, automobile manufacturing, semiconductors, (etc.)]; computer programming for others; conducting of technical project studies; mechanical and technical research in the field of [indicate specific field, e.g. aerospace engineering, geology] services that cannot be classified in other classes including (International Class 42). 

 

13.  Providing of food and drink; cafés; temporary accommodation; rental of temporary accommodation (International Class 43).  <THIS CLASS MUST BE DELETED.>

 

14.  Psychological testing (International Class 44).  <THIS CLASS MUST BE DELETED.>

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

Multiple or Combined Class Applications

 

The application identifies goods and/or services that are classified in at least fourteen (14) international classes, however applicant paid the fee for only twelve (12) class(es).  Applicant must restrict the application to the number of class(es) covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Entity

 

Applicant must specify its country of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

 

Claim of Ownership

 

If applicant is the owner of U.S. Registration Nos. 653695, 815632, 2299293, 2818615, 2849974, others, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 653695, 815632, 2299293, 2818615, 2849974, others.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 285-1184; (703) 308-9113, ext. 480

(703) 746-6228 (FAX)

 

 

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 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.