UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79084847
MARK: VOLKSWAGEN EXCLUSIVE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Volkswagen Aktiengesellschaft
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. If applicant does not respond to this Office action within the six-month period for response, then the following goods will be deleted from the application: Class 12-Motorized land vehicles and their parts included in this class, trailers and semi trailers for vehicles and their parts included in this class, rims for land vehicle wheels and their parts; Class 28-toy vehicles for children (included in this class), scooters (toys for children); apparatus for electronic games including apparatus for video games, other than those adapted for use with external screens or monitors.
The application will then proceed with the following goods and services only: Class 12-engines for land vehicles; alarm systems for motorized land vehicles, anti-theft devices for motorized land vehicles; Class 28-Scale model vehicles, scale model automobiles and toy automobiles; playing cards, stuffed toy animals and other stuffed toys and Class 37 in its entirety. 37 C.F.R. §2.65(a).
INTERNATIONAL REGISTRATION NO. 1044634
This is a PROVISIONAL PARTIAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods in the application: Class 12-Motorized land vehicles and their parts included in this class, trailers and semi trailers for vehicles and their parts included in this class, rims for land vehicle wheels and their parts; Class 28-toy vehicles for children (included in this class), scooters (toys for children); apparatus for electronic games including apparatus for video games, other than those adapted for use with external screens or monitors. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the 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 United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:
This is a partial refusal Office action; the refusal(s) and/or requirement(s) apply only to specified goods in the U.S. application.
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
The wording in the identification of goods is indefinite as the wording is too vague, too broad and does not adequately identify the goods. See TMEP §§1402.01, 1402.03. The following changes are suggested:
Class 12- Motorized land vehicles and their parts included in this class-indefinite. The type of part must be specified, e.g., wheels, transmissions, structural parts for automobiles.
trailers and semi trailers for vehicles and their parts included in this class-indefinite. The type of part must be specified, e.g., wheels, transmissions, structural parts for trailers and semi trailers for vehicles
engines for land vehicles-acceptable
rims for land vehicle wheels and their parts-indefinite. The type of part must be specified, e.g., vehicle wheel rims and structural parts therefor
alarm systems for motorized land vehicles; anti-theft devices for motorized land vehicles-acceptable
Class 28-Scale model vehicles; scale model automobiles and toy automobiles-acceptable;
toy vehicles for children (included in this class)-remove parentheses-amend to: toy vehicles for children;
scooters (toys for children)-remove parentheses-amend to: toy scooters;
playing cards; stuffed toy animals and other stuffed toys-acceptable,
apparatus for electronic games including apparatus for video games, other than those adapted for use with external screens or monitors-indefinite. Amend to: Apparatus for electronic games other than those adapted for use with an external display screen or monitor
The identification of goods and/or services contains parentheses. 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.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
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. See TMEP §1402.04.
/Angela Micheli/
Trademark Examining Attorney, Law Office 101
(571) 272-9196
(571) 273-9196 (fax)
angela.micheli@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.