UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/030029
APPLICANT: Dr. Ing. h. c. F. Porsche AG
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CORRESPONDENT ADDRESS: Lichtenstein, Koerner & Partners |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PORSCHE CAYMAN
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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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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 79/030029
INTERNATIONAL REGISTRATION NO. 0901377
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:
(1) Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney will be considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
Applicant must indicate the United States equivalent of its entity type or provide a description of the nature of the entity. In the “Applicant’s Entity Type” section of the application, applicant does not identify itself. Applicant must identify the type of entity seeking protection and the identification must conform to the common terms designating entity of foreign applicants. TMEP §803.03(i). Furthermore, applicant must specify its country of incorporation, citizenship or organization. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so. TMEP §803.03(i). For example, an applicant can apply as an individual, a partnership, a corporation or a joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. If applicant is an individual, then applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i). If applicant is a corporation or association, then applicant must set forth the U.S. state or country (for foreign applicants only) under whose laws applicant is organized. 37 C.F.R. §2.32(a)(3)(ii). If applicant is a partnership or joint venture, then applicant must list the names and the national citizenship or the U.S. state or country (for foreign applicants only) of organization or incorporation of all the general partners or joint venturers, as well as specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §§2.32(a)(3)(ii) and (iii).
The current wording used to describe some of the goods is indefinite as to the type of goods that will bear the mark, as described below.
Furthermore, Applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
It is important to note that the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may adopt the following identification of goods, if accurate:
International Class 003: bleaching preparations and other substances for laundry use, namely _______ (e.g. fabric softeners, laundry bleach, laundry detergent, laundry pre-soak, laundry soap, and laundry starch. Applicant must specify the common commercial name of the goods.); General purpose cleaning, polishing, and http://atlas/netacgi/ - h11http://atlas/netacgi/ - h13abrasive liquids and powders; soaps namely __________ (soap for body care, liquid soap, hand soap, cream soap. Applicant must enumerate the type of soaps.); perfumery goods, namely __________ (perfume, perfume extracts in the nature of oils, perfume concentrates, perfumes in the nature of deodorants for personal use, perfumes for perfuming linens. Applicant must enumerate the commercial name of the products); essential oils; cosmetics; hair lotions
International Class 009: Scientific apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), nautical apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), surveying apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), electrical apparatus and instruments, namely ___________(e.g. circuit boards, connectors, fuses. Applicant must specify the common commercial names of the apparatus and instruments), photographic apparatus and instruments, namely ___________(e.g. filters, projectors, viewfinders. Applicant must specify the common commercial names of the apparatus and instruments), cinematographic apparatus and instruments, namely sound recording apparatus and instruments, optical apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), weighing apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), measuring apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), signaling apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), checking apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), life-saving apparatus and instruments, namely __________ (Applicant must specify the common commercial name of the goods.), teaching apparatus and instruments, namely ___________(e.g. filters, disk drives, readers. Applicant must specify the common commercial names of the apparatus and instruments), audio-video receivers; electronic devices particularly navigation apparatus for vehicles; eyeglasses; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data processing apparatus and instruments, namely ___________(e.g. central processing units. Applicant must specify the common commercial names of the apparatus and instruments); data carriers equipped with programs featuring __________ (Applicant must specify the type of program), computer game programs; fire-extinguishers
International Class 012: Vehicles, particularly motorcycles and bicycles; apparatus for locomotion by land, air or water, parts of the land, air or water vehicles, namely, ____________ (e.g., automobiles, light trucks. Applicant must specify apparatus and vehicles)
International Class 014: Precious metals and their alloys and goods of precious metals or coated therewith, namely, jewelry of precious metals, imitation jewelry, precious stones; watches and time chronometric instruments; key rings of precious metal, pins, namely, ___________ (e.g. lapel. Applicant must specify the type of pins), tie pins, cuff links
International Class 016: Paper and cardboard; cardboard packaging; stickers, printed matter, namely printed guides in the field of _____________(Applicant must specify the subject matter); bookbinding material, namely tape and wire; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely brushes, pens and pencils; paint brushes; typewriters, namely electric and non-electric typewriters; office requisites, namely ___________(e.g. hole punchers, glue, lettering machines…etc. Applicant must enumerate the office requisites); printed instructional and teaching material in the field of _____________(Applicant must specify the subject matter); plastic materials for packaging, namely bags and plastic bubble packs; paper materials for packaging, namely bags, envelopes and pouches; cardboard boxes and packets; paper boxes and packets; wood pulp board stationery; printers' type; printing blocks, calendars
International Class 018: Leather sold in bulk; tanned leather; imitation leather; goods made of leather and imitation leather, namely, trunks, bags and small articles of leather ware, namely _______ (specify particular goods in International Class 018 only, e.g., briefcases, leather handbags, leather key chains, leather purses, leather straps, traveling cases of leather), umbrellas and parasols
International Class 025: clothing, namely ___________(e.g. t-shirts, scarves, blouses, pants…etc. Applicant must enumerate the type of clothing); footwear; headgear, namely hats and caps, gloves and belts
International Class 028: Games and playthings, namely ____________(e.g. board games, card games, action skill games….etc. Applicant must enumerate the types of games and playthings.); toy cars, model cars, gymnastic equipment, namely apparatus, horizontal bars, and parallel bars; sporting articles, namely ____________(e.g. footballs, football pads, football goals….etc. Applicant must enumerate the types of sports articles.), golf clubs, golf balls; playing cards
TMEP §1402.01. Amended wording is in bold, suggestions and requirements are in italics. The services in International Class 037 are acceptable as written.
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 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.
The decision as to the proper classification of goods or services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak inc., 164 USPQ 88 (TTAB 1969).
/Alain Lapter/
Trademark Attorney - US PTO
Law Office 108
571-272-8607 (phone)
571-273-8607 (fax)
alain.lapter@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.