UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79095416
MARK: AGM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Krauss-Maffei Wegmann GmbH & Co. KG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
INTERNATIONAL REGISTRATION NO. 1055222
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 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).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
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).
Trademark Act Section 2(e)(1) – Descriptive Refusal
Registration is refused because the applied-for mark merely describes a feature, characteristic and/or function of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Here, the applicant seeks to register AGM for tanks, weapons, weapons systems, weapons components, artillery and military equipment and for the servicing, maintenance and repair of weapons systems and weapons systems components.
Within the weapons and military equipment industry, the acronym AGM refers to “Artillery Gun Module,” a type of military equipment. Please see attached definition and Internet evidence describing the artillery gun module (AGM).
As evidenced by the identification of goods and services and attached Internet evidence from the applicant’s website, the applicant’s weapon systems comprise an artillery gun module.
Here, “AGM” does not create a unique commercial impression but rather describes the type of weapons systems and weapons systems services provided by the applicant, namely artillery gun module.
Thus, the proposed mark merely describes a feature, characteristic and/or function of applicant’s goods and services. Registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).
Distinctiveness
The following factors are generally considered when determining whether a mark has acquired distinctiveness based on extrinsic evidence: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.
Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.
To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the United States Congress. See 15 U.S.C. §§1052(f), 1127. Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999); TMEP §§1010, 1212.08.
Applicant must respond to the requirements set forth below.
Request for More Information
To permit proper examination of the application, applicant must submit additional information about the goods and services. See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested information should include fact sheets, instruction manuals, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and services feature new technology and no information regarding competing goods and services is available, applicant must provide a detailed factual description of the goods and services.
Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For the services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Specifically, the applicant must describe in detail the nature, components, features and functions of the applied-for goods and services and indicate whether the applied-for goods and services feature or consist of artillery gun modules.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02. Merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Identification of Goods
THIS REQUIREMENT APPLIES TO CLASS 013 ONLY
The wording “tanks (vehicles)” in the identification of goods is indefinite and must be clarified because this wording may encompass goods classified in multiple international classes. See TMEP §§1402.01, 1402.03. Please note that tanks are classified in Class 013 where as land vehicles are classified in Class 012. However, 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 in the corresponding international registration. 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b).
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).
Therefore, any modification to this wording must identify goods and/or services in International Class 013, the classification specified in the application for these goods and/or services.
The following substitute wording is suggested, if appropriate:
Class 013: “Tanks; weapons, namely ballistic weapons, projectiles, pistols, gas bombs and tear gas weapons; weapon systems comprised of tanks and ballistic weapons; mobile weapon systems comprised of air rifles and projectiles; artillery guns, namely artillery guns for mounting on military vehicles; firearms; ammunition; projectile and propellant feeding devices, namely loading blocks and recappers; projectile guides, namely guided projectiles; gun carriages; parts for the afore-mentioned goods, namely gun parts”
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.
Significance
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
1) Does the acronym AGM refer to a particular type of weapons system, equipment or feature? If so, the applicant must describe said system, equipment or feature.
2) What do the letters comprising the proposed mark AGM stand for, if anything?
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Foreign Attorney May Not Represent Applicant (Advisory)
(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, 712.01.
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, a foreign attorney may not prepare a response or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions. See 37 C.F.R. §§2.62(b), 11.5(b)(2); TMEP §§602.03(c), 608.01.
Thus, unless the identified foreign attorney can establish that he or she is authorized under 37 C.F.R. §11.14, then this attorney is not authorized to practice before the USPTO in trademark matters and may not sign responses or otherwise represent applicant in this application. See 37 C.F.R. §2.62(b); TMEP §602.03(e). Any power of attorney to this foreign attorney is void ab initio. TMEP §602.03(e).
/Natalie Polzer/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4103
natalie.polzer@uspto.gov (not for formal responses)
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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.