UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/048228
MARK: UT
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Otkrytoe aktsionernoe obshchestvo; "Avia ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0948792.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
(2) Canadian attorneys who represent applicants residing in Canada and 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.
Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). 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 is considered an incomplete response. TMEP §§602, 602.03, 603.04, 605.05(a).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1331954, 3204507, 1809615 and 3257655. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The applicant’s mark is UT and design for use with the following goods and services: (only relevant goods listed)
“Caravans, brake linings for vehicles, aeronautical apparatus, machines and appliances, snowmobiles, air balloons, hydroplanes, driving motors for land vehicles, screw-propellers, airships, cable cars, portholes, rolling stock for funicular railways, cars for cable transport installations, hoods for vehicle engines, aeroplanes hulls, ejector seats for aircraft, propulsion mechanisms for land vehicles, repair outfits for inner tubes, air pumps (vehicle accessories), aircraft, aeroplanes, air vehicles; upholstery for vehicles, parachutes, head-rests for vehicle seats, vehicle running boards, anti-dazzle devices for vehicles, anti-theft devices for vehicles, balance weights for vehicle wheels, safety belts for vehicle seats, anti-theft alarms for vehicles, reversing alarms for vehicles, vehicle seats, undercarriages for vehicles, vehicles for locomotion by land, air, water or rail, brakes for vehicles, aerial conveyors, direction signals for vehicles, funiculars, seat covers for vehicles, vehicle chassis,” “Import-export agencies, commercial information agencies, advertising agencies, cost price analysis, rental of advertising space, auditing, computerized file management, efficiency experts, demonstration of goods, opinion polling, marketing studies, business information, business research, marketing research, business management and organization consultancy, professional business consultancy, updating of advertising material, organization of exhibitions for commercial or advertising purposes, organization of trade fairs for commercial or advertising purposes, data search in computer files for others, business management assistance, economic forecasting, auctioneering, sales promotion for others, publication of publicity texts, direct mail advertising, advertising, compilation of information into computer databases, business inquiries, systemization of information into computer databases, procurement services for others (purchasing goods and services for other businesses), business management of hotels, public relations,” “Credit bureaux, real estate agencies, financial analysis, savings banks, issue of tokens of value, capital investments, insurance information, financial information, clearing, financial, insurance consultancy, financial consultancy, financial management, debit card services, credit card services, home banking, factoring, organization of collections, real estate appraisal, financial evaluation (insurance, banking, real estate), electronic funds transfer, guarantees, stocks and bonds brokerage, real estate brokers, insurance brokerage, loans (financing), charitable fund raising, leasing of real estate, financial sponsorship, mortgage banking, accident insurance underwriting, real estate management, banking, fiduciary, mutual funds, financing services, deposits of valuables” AND “Information about telecommunication, telecommunications routing and junction services, providing user access to a global computer network (service providers), providing telecommunications connections to a global computer network, message sending, computer aided transmission of messages and images, sending of telegrams, electronic mail, rental of message sending apparatus, rental of telecommunication equipment, communications by fiber (fiber) optic networks, cellular telephone communication, communications by computer terminals, satellite transmission, communications by telegrams, communications by telephone, facsimile transmission, paging services (radio, telephone or other means of electronic communication), telephone services, telegraph services.”
The registrant’s marks are as follows:
UT 2000, for use with “vehicle tires.”
UT FEDERAL CREDIT UNION and design, for use with “Financial services, namely, credit union services featuring consumer loans, mortgage loans, installment loans, savings account services, checking account services, money market deposit account services, certificate of deposit account services, individual retirement account services, credit card services, debit check card services, providing personal lines of credit, proprietary automated teller machines services, telephone banking, and internet banking.”
UT FREIGHT SERVICE (U.S.A.) LTD. and design, for use with “forwarding cargo nationally and internationally by means of air, sea and land.”
UT STARCOM and design, for use with “Telecommunication systems for transmitting and receiving data and voice signals over physical lines or wireless communication networks, namely, wireless telephones and parts therefor, wireless local loop circuits, computer hardware multiplexers, line terminals, central office terminals, air traffic controllers, ATM concentrators, remote port controllers, radio ports, wireless subscriber base stations, and software for telecommunications applications” and “Consulting services for telecommunication systems and related hardware.”
Similarity of the Marks
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
The applicant’s mark is similar in sound, appearance and meaning to the cited registrations because it contains similar wording found in each respective mark. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).
Further, such similar wording appears to be the dominant portion of both applicant’s mark and the cited registrations. The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).
Here, the term UT is dominant for a number of reasons. First, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).
Second, the wording found in some of the cited registrations is disclaimed. Disclaimed matter is typically less significant or less dominant when comparing marks. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).
Similarity of the Goods/Services
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
Moreover, likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
With respect to the goods in Class 012, the Trademark Trial and Appeal Board has generally held that marketing by different parties of different types of automotive parts and accessories under the same or similar marks is likely to cause confusion. See In re Jeep Corporation, 222 USPQ 333, 334 (TTAB 1984) (citing Monarch Mufflers, Inc., v. Goerlick's, Inc., 148 USPQ 20 (TTAB 1965) (MONARCH for brake linings for automotive use likely to cause confusion with MONARCH for exhaust mufflers for motor vehicles); AP Parts Corp. v. Automotive Products Associated, 156 USPQ 254 (TTAB 1967) (AP for clutches, brakes, steering joints, tie-rod joints, and suspension joints for land vehicles, aircraft or watercraft likely to cause confusion with AP for mufflers for explosive engines); Sieberling Rubber Co. v. General Battery and Ceramic Corp., 167 USPQ 766 (TTAB 1964) (HOLIDAY for storage batteries likely to cause confusion with HOLIDAY for pneumatic rubber tires and automobile floor mats); In re Market Tire Co. of Maryland, Inc., 171 USPQ 636 (TTAB 1971) (ADMIRAL for vehicle tires likely to cause confusion with ADMIRAL for radiator antifreeze); In re Uniroyal, Inc., 177 USPQ 29 (TTAB 1973) (KODIAK for vehicle tires likely to cause confusion with KODIAK and design for antifreeze and KODIAK for automobile heaters); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1984) (MAGIC for vehicle parts, namely mufflers likely to cause confusion with MAGIC for motors for motor vehicles); In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106 (TTAB 1975) (T and design for, inter alia, hoses, namely rubber hoses and inner tubes for tires and pneumatic, semisolid and solid tires likely to cause confusion with T and design for, inter alia, motor oil, oil additives and fuel additives); In re Red Diamond Battery Co., 203 USPQ 472 (TTAB 1979) (RED DIAMOND for storage batteries likely to cause confusion with DIAMOND for pneumatic rubber automobile and vehicle tires); In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981) (ULTRA for outside mounted vehicle mirrors likely to cause confusion with ULTRA and design for automobile parts, namely pistons and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts, hydraulic brake parts, automatic transmission repair kits and parts, engine bearings and jacks).
In view of the foregoing, the similarities between the marks and the relatedness of the goods and services, weigh in favor of a likelihood of confusion. Accordingly, registration is refused.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Prior Pending Applications
Information regarding pending Application Serial Nos. 78767914 and 77061832 is enclosed. The filing dates of the referenced applications precede applicant’s filing date. There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks. If one or more of the referenced applications 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 applications.
If applicant believes that there is no potential conflict between this application and the earlier-filed applications, 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.
Upon entry of a response to the following, action on this case will be suspended pending final disposition of the earlier-filed application.
Country of Incorporation
Applicant must specify its country of incorporation. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
Legal Nature
Applicant must specify what type of entity is applying, e.g., an individual, partnership, corporation or joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.
Identification of Goods and Services
The identification of goods and services is unacceptable because some of the goods and services are indefinite. Applicant must amend the identification of goods and services to specify the common commercial or generic name for the goods or services. If there is no common commercial or generic name for the product or service, then applicant must describe the product or service the and intended consumer as well as its main purpose and/or intended uses. TMEP §1402.01. For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below.
The applicant may adopt the following identification, if accurate:
The identification of goods and services must be amended because (1) it contains indefinite entries; (2) it includes unnecessary wording and wording in parentheses; (3) the punctuation is confusing, that is, commas appear in places where there should be semicolons; and (4) the spelling of some words should be corrected to conform to spelling common in the United States. TMEP §1402.01.
Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only 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.
For clarity, semicolons should be used in place of commas to separate individual entries (even single words) in a series when at least one entry consists of a phrase containing commas, such as “vehicles for locomotion by land, air, water or rail.”
Following are requirements and suggested identifications, by class:
Class 12 – Some entries are indefinite; the following format is suggested:
Caravans; brake linings for vehicles; aeronautical apparatus, machines and appliances, namely, [identify specific goods by common commercial name, e.g., landing gear], snowmobiles; air balloons; hydroplanes; driving motors for land vehicles; screw propellers; airships; cable cars; portholes; rolling stock for funicular railways; cars for cable transport installations; hoods for vehicle engines; airplane hulls; ejector seats for aircraft; propulsion mechanisms for land vehicles; repair kits for inner tubes; air pumps for vehicles; aircraft, airplanes; air vehicles, namely, [identify specific types of vehicles, e.g., air-cushion vehicles]; upholstery for vehicles; parachutes; head rests for vehicle seats; vehicle running boards; anti-dazzle films for vehicles; anti-theft devices for vehicles; balance weights for vehicle wheels; safety belts for vehicle seats; anti-theft alarms for vehicles; reversing alarms for vehicles; vehicle seats; undercarriages for vehicles; vehicles for locomotion by land, air, water or rail, namely, [identify specific types of air, water and rail vehicles, e.g., land vehicles, airplanes, boats]; brakes for vehicles; aerial conveyors, namely, [identify specific goods]; directional signals for vehicles; funicular railcars; seat covers for vehicles; vehicle chassis.
Class 14 – The wording “(jewellery, jewelry am.)” (four places) is unnecessary and should be deleted. The following identification is suggested:
Jewelry, namely, amulets; objects of imitation gold, namely, [insert specific items by common commercial name, e.g., rings]; bracelets; straps for wristwatches; charms; alarm clocks; unwrought or beaten gold; jewelry; works of art of precious metal; precious stones; semiprecious stones; boxes of precious metal; unwrought or semi-wrought precious metals; clockworks; [insert types of coins, such as “collectible,” “commemorative,” or “nonmonetary”] coins; chronometric instruments; ingots of precious metals; alloys of precious metal; statues of precious metal; figurines of precious metal; ornaments of precious metal; cases for jewelry; watches.
Class 16 – The following identification format is suggested:
Table linen of paper; paper; engravings; printed publications, namely, [identify specific types of publications and their subject matter, e.g., books about travel]; bags, namely, envelopes and pouches of paper or plastic for packaging; cardboard articles, namely, [identify specific goods, e.g., boxes]; graphic prints; teaching materials, namely, [identify specific goods, e.g., printed text books about American history]; garbage bags of paper or plastics; stationery cases; stickers; conical paper bags; printed periodicals in the field of [specify subject matter, e.g., cars]; paper towels; writing sets containing [specify contents by common commercial name, e.g., pens, pencils]; writing instruments; school supply kits containing [specify items in kits by common commercial name, e.g., writing paper, pens, crayons]; printed matter, namely, [identify specify types of printed matter by common commercial name, e.g., writing paper, calendars]; graphic reproductions; face towels of paper; stationery; silver paper; photo-engravings; photographs; engraved prints; paper labels.
Class 25 – The wording in parentheses is unnecessary are should be deleted. The following identification is suggested:
Underwear; collars; neckties; hosiery; heels; collar protectors; cap visors [in place of “peaks”]; tights; bodices; beach clothes; camisoles; cuffs; chemisettes; coats; fur clothing, namely, [insert specific items of fur clothing, e.g., jackets]; heelpieces for boots and shoes; earmuffs; socks; footwear; fittings of metal for shoes and boots; babies’ [insert “diapers” or “bibs” (“napkins” is unclear)] of textile; gloves; scarves; garters; ready-made clothing linings; dress shields; soles for footwear; suspenders; money belts; layettes; nonslipping devices for boots and shoes; welts for boots and shoes; footwear uppers; innersoles, caps; aprons; tips for footwear; stockings; bathing caps; sashes for wear; studs for football boots.
Class 26 – Portions of the identification are indefinite; the following amended identification is suggested:
Dress fastenings, namely, [identify types of fastenings, e.g., zip fasters, snap fasteners]; ornamental novelty badges for wear, not of precious metal; lace trimmings; embroidery; haberdasher’s goods, namely, [identify specific goods, e.g., bead, other than for making jewelry]; braids; gold embroidery; snap fasteners; sewing boxes; clothing buckles; buttons; shoe ornaments not of precious metal; lace trimmings for clothing; hat ornaments not of precious metal; shoelaces; hair curling pins.
Class 29 – Following is a suggested identification; unnecessary wording and wording in parentheses have been deleted:
Alginates for food; processed anchovies; albumen for food; bouillon; jams; fatty substances for the manufacture of edible fats; game for food; unflavored and unsweetened gelatin; jellies for food; egg yolks; edible fats; charcuterie; caviar; tinned meat; tinned vegetables; tinned fish; tinned fruits; bouillon concentrates; piccalilli; marmalade; edible oils; butter; animal marrow for food; clams; fishmeal for human consumption; fruit pulp; meat; preserved vegetables; dried vegetables; cooked vegetables; preserved olives; prepared nuts; tomato puree; liver pate; pectin for food; powdered eggs; ham; milk products excluding ice cream, ice milk and frozen yogurt; food products made from fish, namely, [identify specific products, e.g., fish cakes, fish sausages]; protein for human consumption; poultry; berry puree; fruit puree; vegetable purees; crayfish, not live; fish, not live; vegetable salads; fruit salads; bacon; fat-containing mixtures for bread slices, namely, [identify with more specificity, e.g., magarine, edible oils, edible fats]; vegetable juices for cooking; preparations for making bouillon; preparations for making soup; tripe; soups; rennet; frozen fruits; preserved fruit; stewed fruit; fruit peel; potato chips; fruit chips; weed extracts for food; meat extracts; eggs.
Class 30 – Some of the wording in the identification is indefinite; the following amended format is suggested:
Aromatic preparations for food, namely, [name specific goods]; pastries; pasta; pasties; cocoa; cocoa products, namely, [name specific goods, e.g., powder, spreads]; gruel with a milk base; coffee; food starch; groats for human food; milled corn; roasted corn; farinaceous food pastes for human consumption; edible ices; custard; honey; flour for food; muesli; coffee-based beverages; tea-based beverages; chocolate-based beverages; cocoa-based beverages; nonmedicinal [specify type, e.g., herbal] infusions; nutmeg; golden syrup; pizza; popcorn; powders for ice cream; pralines; condiments, namely, [specify type in Class 30, e.g., ketchup, mustard]; cereal preparations, namely, [specify type, e.g. energy bars]; flour-milling products, namely, [name specific goods, e.g., wheat flour]; propolis for human consumption; spices; cake powder; ravioli; chewing gum, not for medical purposes; cake paste; confectionery, namely, [specify type, e.g., frozen yoghurt]; malt for human consumption; seasonings; preparations for stiffening whipped cream; sushi; sandwiches; yeast in pill form, not for medical use; bread; tea; malt extract for food; essences for foodstuffs, namely, [specify type, e.g. coffee essences].
Class 32 – Some of the items are indefinite and require amendment. Following is a suggested identification:
Mineral water; nonalcoholic beverages, namely, [specify type, e.g., soft drinks]; isotonic beverages; nonalcoholic fruit juice beverages; nonalcoholic fruit nectars; beer; powders for effervescing beverages; syrups for beverages; vegetable juices for use as beverages; fruit juices; preparations for making [specify type, e.g., fruit] beverages; preparations for making mineral water; unfermented must; pastilles for effervescing beverages; nonalcoholic fruit extracts; extracts of hops for making beer; essences for making [specify type, e.g., soft drink] beverages.
Class 33 – Some of the items are indefinite; the following identification is suggested:
Alcoholic beverages except beers, spirits, distilled beverages of [specify types, e.g., rice, corn, barley]; alcoholic bitters; hard cider; distilled spirits of rice; alcoholic extracts; alcoholic essences.
Class 35 – The identification may be amended as follows:
Import-export agencies; commercial information agencies; advertising agencies; cost price analysis; rental of advertising space; auditing [specify type, e.g., business auditing, account auditing]; computerized file management; efficiency experts; demonstration of goods; opinion polling; marketing studies; business information; business research; marketing research; business management and organization consultancy; professional business consultancy; updating of advertising material; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; data search in computer files for others; business management assistance; economic forecasting; auctioneering; sales promotion for others; publication of publicity texts; direct mail advertising; advertising; compilation of information into computer databases; business inquiries; systemization of information into computer databases; procurement services, namely, purchasing [specify types of goods, e.g., office furniture] for other businesses; business management of hotels; public relations.
Class 36 – Some of the items are indefinite; the following identification is suggested:
Credit bureaus; real estate agencies; financial analysis; savings banks; issue of tokens of value; capital investments; insurance information; financial information; financial clearing houses; insurance consultancy; financial consultancy; financial management; debit card services; credit card services; home banking; factoring; organization of collections; real estate appraisal; financial evaluation in the fields of insurance, banking, and real estate; electronic funds transfer; financial guarantees; stocks and bonds brokerage; real estate brokerage; insurance brokerage; loan financing; charitable fund raising; leasing of real estate; financial sponsorship; mortgage banking; accident insurance underwriting; real estate management; banking; fiduciary representatives; mutual fund investment; financing services; safe deposit box services.
Class 37 – The following amended identification is suggested:
Rebuilding engines that have been worn or partially destroyed; rebuilding machines that have been worn or partially destroyed; mining extraction; repair information concerning [specify subjects of repair, e.g., vehicles and vehicle parts]; construction information concerning [specify types of construction projects, e.g., home building, commercial construction], vehicle washing; anti-rust treatment for vehicles; vehicle maintenance; vehicle polishing; rental of construction equipment; rental of bulldozers; airplane maintenance and repair; shoe repair; clothing repair; vehicle lubrication; demolition of buildings; vehicle service stations; construction of [specify what is constructed, e.g., buildings]; burglar alarm installation and repair; electric appliance installation and repair; installation, maintenance and repair of computer hardware; cleaning of clothing; vehicle cleaning.
Class 38 – The following amended identification is suggested:
Information about telecommunication; telecommunications routing and junction services; providing user access to a global computer network; providing telecommunications connections to a global computer network; message sending; computer-aided transmission of messages and images; sending of telegrams; electronic mail; rental of message-sending apparatus; rental of telecommunication equipment; communications by fiber-optic networks; cellular telephone communication; communication by computer terminals; satellite transmission; communication by telegrams; communication by telephone; facsimile transmission; paging services by radio, telephone or other means of electronic communication; telephone services; telegraph services.
Class 39 – The following identification is suggested:
Parking place rental; booking of seats for travel; travel reservation; transport reservation; towing of [specify what is towed, e.g., vehicles]; delivery of goods; transportation information; storage information; arranging of cruises; arranging of tours; transporting [specify the means of transport, e.g., by boat], transport brokerage; rental of storage containers; vehicle rental; stevedoring; packaging of goods; garage rental; rental of vehicle roof racks; rental of warehouses; escorting of travelers; wrapping of goods; car parking; chauffeur services; courier services; [“transport” deleted, since it is synonymous with “transporting”]; storage of goods; conducting sightseeing tours; freight forwarding.
Class 41 – A number of entries are indefinite; the following format is suggested:
Videotaping; discotheque services; [“gaming” is indefinite; more specificity is required]; education information; recreation information; entertainment information; health club services, namely, providing physical fitness instruction and equipment; club services, namely, [specify type of clubs, e.g., health clubs]; night clubs; game services provided on-line from a computer network; educational services, namely, [specify type of educational services and medium of learning, e.g., seminars in the field of auto repair]; organization of exhibitions for cultural or educational purposes; providing recreation facilities; arranging and conducting colloquiums in the field of [specify subject matter, e.g., auto repair]; arranging and conducting congresses in the field of [specify subject matter, e.g., auto repair]; arranging and conducting educational conferences; arranging and conducting workshops in the field of [specify subject matter, e.g., auto repair]; arranging and conducting seminars in the field of [specify subject matter, e.g., auto repair]; arranging and conducting symposiums in the field of [specify subject matter, e.g., auto repair]; organization of [specify type, e.g., sporting] competitions; operating lotteries; holiday camp services; organization of sports competitions; providing sports facilities; providing amusement arcade services; cinema presentations; videotape film production; rental of sound recordings; rental of audio equipment; rental of camcorders; rental of video cassette recorders; rental of videotapes; rental of films; rental of radio and television sets; rental of sports equipment; electronic desktop publishing; publication of texts, other than publicity texts; entertainment, namely, [name specific types of entertainment, e.g., live comedy shows]; party planning; providing casino facilities; recording studio services; photography; photographic reporting; production of [specify type, e.g., television] shows.
Class 42 – The following amended identification is suggested:
Computer systems analysis; recovery of computer data; graphic arts design; technical project studies; engineering; installation of computer software; meteorological information; material testing; research and development for others in the field of [specify subject matter, e.g., computers]; technical research in the field of [specify subject matter, e.g., computers]; consultancy in the field of computer hardware; vehicle roadworthiness testing; updating of computer software; maintenance of computer software; design of interior décor; computer system design; computer rental; rental of computer software; duplication of computer programs; computer software design; computer programming; industrial design; packaging design; surveying.
Class 43 – The following amended identification is suggested:
Accommodation bureaus for hotels and boarding houses; providing temporary accommodations; rental of meeting rooms; tourist homes; hotel reservations; boarding house bookings; temporary accommodation reservations; hotels; snack bars; cafes; cafeterias; motels; boarding houses; rental of chairs, tables, table linen, and glassware; restaurants; providing lodging for holiday camps; bar services; providing campground facilities.
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.
The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html. The Manual includes explanations and notices of classification policy. The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
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).
Response to Office Action
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.
/David A. Hoffman/
Examining Attorney
Law Office 107
(Ph) 571-272-8805
(Fx) 571-273-8805
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.