Response to Office Action

VW

Volkswagen Aktiengesellschaft

Response to Office Action

PTO Form 1957 (Rev 8/2005)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 79001133
66(a) FILING BASIS YES
MARK SECTION (no change)
GOODS AND/OR SERVICES SECTION (1st class)(current)
INTERNATIONAL CLASS 007
DESCRIPTION
Motors, including their parts, other than for land vehicles, motor parts for land vehicles including filters for cleaning cooling air (for engines), glow plugs for Diesel engines; machine coupling and transmission components (except for land vehicles) including clutches other than for land vehicles, jacks (machines); agricultural implements other than hand-operated
GOODS AND/OR SERVICES SECTION (1st class)(proposed)
INTERNATIONAL CLASS 007
DESCRIPTION
Motors other than for land vehicles, namely, direct current motors, boat motors, electric starter motors, electric motors for machines, and their parts,namely, motor starters, machine cylinders, machine cylinder heads, machine pumps, camshafts, pistons, fly wheels, bearings, valves, exhausts for engines, injectors for engines, carburetors for engine, filters for cleaining cooling air, glow plugs for diesel engines, engine blocks, intake and exhaust manifolds, cylinders, filters for cleaning cooling air for engines, and glow plugs for diesel engines, machine coupling and transmission components not for land vehicles, clutches for machines not for land vehicles, jacks for machines, namely, hydraulic and power operated jacks, agricultural implements that are not hand operated, namely, seed drills, incorporators, cultivators, harvesters, disk harrows, seeders, mechanized livestock feeders, power operated agricultural implements for attachments to tractors and harvesters
GOODS AND/OR SERVICES SECTION (2nd class)(current)
INTERNATIONAL CLASS 012
DESCRIPTION
Apparatus for locomotion by land, air or water including their parts including vehicles and their parts, automobiles and their parts, engines for land vehicles
GOODS AND/OR SERVICES SECTION (2nd class)(proposed)
INTERNATIONAL CLASS 012
DESCRIPTION
Apparatus for locomotion by land, air or water including vehicles, namely, automobiles, trucks, vans, sport utility vehicles, lorries, trailers, buses, trains, locomotives, bicycles, tricycles, unicycles, motorcycles, snowmobiles, airplanes, boats and ships, hot air balloons and dirigibles, camping trailers, folding and hard side camping trailers, motor homes, conversion vans, travel trailers, camper coaches, their structural and replacement ; engines for land vehicles
GOODS AND/OR SERVICES SECTION (3rd class)(current)
INTERNATIONAL CLASS 016
DESCRIPTION
Goods made from paper, cardboard, included in this class; printed matter; stationery; typewriters, pens and office articles (excluding furniture); instructional and teaching material (except apparatus) including playing cards, atlases, calendars, geographical maps, printed publications, ball-point pens and pencils, flags (of paper), table napkins of paper
GOODS AND/OR SERVICES SECTION (3rd class)(proposed)
INTERNATIONAL CLASS 016
DESCRIPTION
Goods made from paper and cardboard, namely, calendars, boxes of paper or cardboard, packing cardboard, bond paper, art paper; printed matter, namely, atlases and geographical maps, books and printed instructional and teaching materials in the field of science and technology; stationery; typewriters, pens and office articles not including furniture, namely, office hole punchers, glues for the office, punches, rubber bands; ball point pens and pencils, paper flags and table napkins of paper
GOODS AND/OR SERVICES SECTION (4th class)(current)
INTERNATIONAL CLASS 028
DESCRIPTION
Games and playthings; gymnastic and sporting articles included in this class, including scale model vehicles, especially scale model cars, balls, plush toys, apparatus for electronic games other than those adapted for use with television receivers only
GOODS AND/OR SERVICES SECTION (4th class)(proposed)
INTERNATIONAL CLASS 028
DESCRIPTION
Games and playthings, namely, toy building blocks, building games, board games, namely, checkers, playing cards, scale model vehicles, and scale model cars; gymnastic and sporting articles, namely,gymnastic horizontal bars, gymnastic training stools, gumnastic parallel bars, gymnastic vaulting horses, balls, plush toys, apparatus for electronic games other than those adapted for use with television receiversonly, namely, arcade type electronic education video games, electronic dart games, and handheld unit for playing electronic games
GOODS AND/OR SERVICES SECTION (5th class)(current)
INTERNATIONAL CLASS 035
DESCRIPTION
Advertising; business management; business administration; office work including personnel recruitment, personnel management consultancy, business management consultancy, public relations, organization of trade fairs for commercial or advertising purposes
GOODS AND/OR SERVICES SECTION (5th class)(proposed)
INTERNATIONAL CLASS 035
DESCRIPTION
Advertising, namely, dirct mail advertising, electronic billboard advertising, television advertising agencies, advertising agencies, namely, promoting the services of automobile dealerships, banks, through the distribution of 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 online 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; business management; business administration and office work; personnel recruitment, personnel management consultancy, business management consultancy, public relations, organization of trade fairs for commercial or advertising purposes
GOODS AND/OR SERVICES SECTION (6th class)(current)
INTERNATIONAL CLASS 036
DESCRIPTION
Insurance including health insurance underwriting, insurance brokerage, accident insurance underwriting; financial affairs, monetary affairs including issuance of credit cards, banking, loans (financing), instalment loans, credit bureaux, financial consultancy, hire-purchase financing, saving banks, instalment loans; real estate affairs including apartment house management, real estate management, real estate appraisal, rental of offices (real estate), renting of flats, real estate agencies, accommodation bureaux (apartments), leasing of real estates
GOODS AND/OR SERVICES SECTION (6th class)(proposed)
INTERNATIONAL CLASS 036
DESCRIPTION
Insurance, namely, health insurance underwriting, insurance brokerage, accident insurance underwriting; financial services and monetary affairs, namely, issuance of credit cards, banking, loans financing, installment loans, credit bureaus, financial consultancy, hire-purchase financing, saving banks and installment loans; real estate affairs, namely, apartment house management, real estate management, real estate appraisal, rental of office space, renting of apartments, real estate agencies, apartment locators, leasing of real estates
GOODS AND/OR SERVICES SECTION (7th class)(current)
INTERNATIONAL CLASS 037
DESCRIPTION
Repair and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service; cleaning, repairing, maintenance and varnishing of vehicles
GOODS AND/OR SERVICES SECTION (7th class)(proposed)
INTERNATIONAL CLASS 037
DESCRIPTION
Repair and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service; cleaning, repairing, maintenance and polishing of vehicles
GOODS AND/OR SERVICES SECTION (8th class)(current)
INTERNATIONAL CLASS 038
DESCRIPTION
Telecommunication; news agencies, electronic mail, rental of telecommunication equipment
GOODS AND/OR SERVICES SECTION (8th class)(proposed)
INTERNATIONAL CLASS 038
DESCRIPTION
Telecommunication services, namely, providing telecommunication connections to the internet, telecommunications air time brokerage services; telecommunication gateway services; providing internet gateways; ISDN services; personal communication services; news agencies, namely, gathering and dissemination of news; electronic mail and rental of telecommunications equipment
GOODS AND/OR SERVICES SECTION (9th class)(current)
INTERNATIONAL CLASS 039
DESCRIPTION
Transport including towing, taxi transport, car transport, arranging of tours, rental and leasing of vehicles, especially automobiles, transport of people, especially by motor buses
GOODS AND/OR SERVICES SECTION (9th class)(proposed)
INTERNATIONAL CLASS 039
DESCRIPTION
Transportation services, namely,emergency truck or auto towing, taxi transport, car transport, arranging of travel tours, rental and leasing of vehicles, especially automobiles, transport of people, namely, by motor buses, by airplane, by train and by ferry
GOODS AND/OR SERVICES SECTION (10th class)(current)
INTERNATIONAL CLASS 040
DESCRIPTION
Material treatment including waste treatment (transformation), metal treating
GOODS AND/OR SERVICES SECTION (10th class)(proposed)
INTERNATIONAL CLASS 040
DESCRIPTION
Material treatment namely, waste treatment, metal treatment, treatment of wood, plastics, concrete, and ceramics
GOODS AND/OR SERVICES SECTION (11th class)(current)
INTERNATIONAL CLASS 041
DESCRIPTION
Teaching; education information; entertainment; sporting and cultural activities including arranging and conducting of conferences, congresses, symposiums, organization of exhibitions for cultural or educational purposes, providing cinema facilities, presentation of live performances, providing museums facilities (presentation, exhibitions), orchestra services, organization of sport competitions, gaming
GOODS AND/OR SERVICES SECTION (11th class)(proposed)
INTERNATIONAL CLASS 041
DESCRIPTION
Teaching in the fields of science and engineering; providing educational information in the field of science and engineering; entertainment in the nature of live musical groups, television comedy series, ethnic festivals; sporting and cultural activities, namely, arranging and conducting of conferences, congresses, symposiums, organization of exhibitions for cultural or educational purposes in the field of science and engineering; providing cinema facilities, presentation of live performances, providing museums facilities, entertainment in the nature of orchestra performances, organization of sport competitions, gaming services, namely, leasing of casino and electronic gaming machines and providing casino facilities
GOODS AND/OR SERVICES SECTION (12th class)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Providing of food and drink; temporary accomodation; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes including cafés; rental of temporary accommodation, consultancy in the field of computer hardware, psychological testing, rental of computer software, computer rental, technical project studies; mechanical and technical research
GOODS AND/OR SERVICES SECTION (12th class)(proposed)
INTERNATIONAL CLASS 042
DESCRIPTION
consultancy in the field of computer hardware, rental of computer software, scientific and industrial research in the field of petrochemical production, automobile manufacturing, semiconductors; computer programming for others; conducting of technical project studies; mechanical and technical research in the field of aerospace engineering and geology
ADDITIONAL STATEMENTS SECTION
PRIOR REGISTRATION(S) Applicant claims ownership of U.S. Registration Number(s) 653695, 815632, 2299293 and others .
MISCELLANEOUS STATEMENT Applicant is a company incorporated in Germany
SIGNATURE SECTION
RESPONSE SIGNATURE /Stewart L. Gitler/
SIGNATORY NAME Stewart L. Gitler
SIGNATORY POSITION Attorney
SIGNATURE DATE 02/03/2005
FILING INFORMATION SECTION
SUBMIT DATE Thu Feb 03 15:08:06 EST 2005
TEAS STAMP USPTO/OA-XXXXXXXXXXX-2005
0203150806400185-79001133
-200cafb91a41038665b174a8
49299779fe0-N-N-200502031
50741956984



PTO Form 1957 (Rev 8/2005)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 79001133 is amended as follows:    
        
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 007 for Motors, including their parts, other than for land vehicles, motor parts for land vehicles including filters for cleaning cooling air (for engines), glow plugs for Diesel engines; machine coupling and transmission components (except for land vehicles) including clutches other than for land vehicles, jacks (machines); agricultural implements other than hand-operated
Original Filing Basis: Section 66(a).
Proposed: Class 007 for Motors other than for land vehicles, namely, direct current motors, boat motors, electric starter motors, electric motors for machines, and their parts,namely, motor starters, machine cylinders, machine cylinder heads, machine pumps, camshafts, pistons, fly wheels, bearings, valves, exhausts for engines, injectors for engines, carburetors for engine, filters for cleaining cooling air, glow plugs for diesel engines, engine blocks, intake and exhaust manifolds, cylinders, filters for cleaning cooling air for engines, and glow plugs for diesel engines, machine coupling and transmission components not for land vehicles, clutches for machines not for land vehicles, jacks for machines, namely, hydraulic and power operated jacks, agricultural implements that are not hand operated, namely, seed drills, incorporators, cultivators, harvesters, disk harrows, seeders, mechanized livestock feeders, power operated agricultural implements for attachments to tractors and harvesters
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 012 for Apparatus for locomotion by land, air or water including their parts including vehicles and their parts, automobiles and their parts, engines for land vehicles
Original Filing Basis: Section 66(a).
Proposed: Class 012 for Apparatus for locomotion by land, air or water including vehicles, namely, automobiles, trucks, vans, sport utility vehicles, lorries, trailers, buses, trains, locomotives, bicycles, tricycles, unicycles, motorcycles, snowmobiles, airplanes, boats and ships, hot air balloons and dirigibles, camping trailers, folding and hard side camping trailers, motor homes, conversion vans, travel trailers, camper coaches, their structural and replacement ; engines for land vehicles
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 016 for Goods made from paper, cardboard, included in this class; printed matter; stationery; typewriters, pens and office articles (excluding furniture); instructional and teaching material (except apparatus) including playing cards, atlases, calendars, geographical maps, printed publications, ball-point pens and pencils, flags (of paper), table napkins of paper
Original Filing Basis: Section 66(a).
Proposed: Class 016 for Goods made from paper and cardboard, namely, calendars, boxes of paper or cardboard, packing cardboard, bond paper, art paper; printed matter, namely, atlases and geographical maps, books and printed instructional and teaching materials in the field of science and technology; stationery; typewriters, pens and office articles not including furniture, namely, office hole punchers, glues for the office, punches, rubber bands; ball point pens and pencils, paper flags and table napkins of paper
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 028 for Games and playthings; gymnastic and sporting articles included in this class, including scale model vehicles, especially scale model cars, balls, plush toys, apparatus for electronic games other than those adapted for use with television receivers only
Original Filing Basis: Section 66(a).
Proposed: Class 028 for Games and playthings, namely, toy building blocks, building games, board games, namely, checkers, playing cards, scale model vehicles, and scale model cars; gymnastic and sporting articles, namely,gymnastic horizontal bars, gymnastic training stools, gumnastic parallel bars, gymnastic vaulting horses, balls, plush toys, apparatus for electronic games other than those adapted for use with television receiversonly, namely, arcade type electronic education video games, electronic dart games, and handheld unit for playing electronic games
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Advertising; business management; business administration; office work including personnel recruitment, personnel management consultancy, business management consultancy, public relations, organization of trade fairs for commercial or advertising purposes
Original Filing Basis: Section 66(a).
Proposed: Class 035 for Advertising, namely, dirct mail advertising, electronic billboard advertising, television advertising agencies, advertising agencies, namely, promoting the services of automobile dealerships, banks, through the distribution of 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 online 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; business management; business administration and office work; personnel recruitment, personnel management consultancy, business management consultancy, public relations, organization of trade fairs for commercial or advertising purposes
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 036 for Insurance including health insurance underwriting, insurance brokerage, accident insurance underwriting; financial affairs, monetary affairs including issuance of credit cards, banking, loans (financing), instalment loans, credit bureaux, financial consultancy, hire-purchase financing, saving banks, instalment loans; real estate affairs including apartment house management, real estate management, real estate appraisal, rental of offices (real estate), renting of flats, real estate agencies, accommodation bureaux (apartments), leasing of real estates
Original Filing Basis: Section 66(a).
Proposed: Class 036 for Insurance, namely, health insurance underwriting, insurance brokerage, accident insurance underwriting; financial services and monetary affairs, namely, issuance of credit cards, banking, loans financing, installment loans, credit bureaus, financial consultancy, hire-purchase financing, saving banks and installment loans; real estate affairs, namely, apartment house management, real estate management, real estate appraisal, rental of office space, renting of apartments, real estate agencies, apartment locators, leasing of real estates
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 037 for Repair and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service; cleaning, repairing, maintenance and varnishing of vehicles
Original Filing Basis: Section 66(a).
Proposed: Class 037 for Repair and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service; cleaning, repairing, maintenance and polishing of vehicles
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 038 for Telecommunication; news agencies, electronic mail, rental of telecommunication equipment
Original Filing Basis: Section 66(a).
Proposed: Class 038 for Telecommunication services, namely, providing telecommunication connections to the internet, telecommunications air time brokerage services; telecommunication gateway services; providing internet gateways; ISDN services; personal communication services; news agencies, namely, gathering and dissemination of news; electronic mail and rental of telecommunications equipment
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 039 for Transport including towing, taxi transport, car transport, arranging of tours, rental and leasing of vehicles, especially automobiles, transport of people, especially by motor buses
Original Filing Basis: Section 66(a).
Proposed: Class 039 for Transportation services, namely,emergency truck or auto towing, taxi transport, car transport, arranging of travel tours, rental and leasing of vehicles, especially automobiles, transport of people, namely, by motor buses, by airplane, by train and by ferry
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 040 for Material treatment including waste treatment (transformation), metal treating
Original Filing Basis: Section 66(a).
Proposed: Class 040 for Material treatment namely, waste treatment, metal treatment, treatment of wood, plastics, concrete, and ceramics
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Teaching; education information; entertainment; sporting and cultural activities including arranging and conducting of conferences, congresses, symposiums, organization of exhibitions for cultural or educational purposes, providing cinema facilities, presentation of live performances, providing museums facilities (presentation, exhibitions), orchestra services, organization of sport competitions, gaming
Original Filing Basis: Section 66(a).
Proposed: Class 041 for Teaching in the fields of science and engineering; providing educational information in the field of science and engineering; entertainment in the nature of live musical groups, television comedy series, ethnic festivals; sporting and cultural activities, namely, arranging and conducting of conferences, congresses, symposiums, organization of exhibitions for cultural or educational purposes in the field of science and engineering; providing cinema facilities, presentation of live performances, providing museums facilities, entertainment in the nature of orchestra performances, organization of sport competitions, gaming services, namely, leasing of casino and electronic gaming machines and providing casino facilities
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Providing of food and drink; temporary accomodation; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes including cafés; rental of temporary accommodation, consultancy in the field of computer hardware, psychological testing, rental of computer software, computer rental, technical project studies; mechanical and technical research
Original Filing Basis: Section 66(a).
Proposed: Class 042 for consultancy in the field of computer hardware, rental of computer software, scientific and industrial research in the field of petrochemical production, automobile manufacturing, semiconductors; computer programming for others; conducting of technical project studies; mechanical and technical research in the field of aerospace engineering and geology
 
Additional Statements
Applicant claims ownership of U.S. Registration Number(s) 653695, 815632, 2299293 and others .
Applicant is a company incorporated in Germany
        
Response Signature
        
Signature: /Stewart L. Gitler/     Date: 02/03/2005
Signatory's Name: Stewart L. Gitler
Signatory's Position: Attorney
        
        
        
Serial Number: 79001133
Internet Transmission Date: Thu Feb 03 15:08:06 EST 2005
TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2005020315080640018
5-79001133-200cafb91a41038665b174a849299
779fe0-N-N-20050203150741956984




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