UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

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.

 

ISSUE/MAILING DATE:

 

INTERNATIONAL REGISTRATION NO. 1083172

 

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 issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of Office’s Database of Marks

 

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).

 

Section 2(e)(1) Refusal – Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a feature, characteristic or use of applicant’s identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). 

 

Applicant is applying for GT2 for use in connection with automobiles and their parts, key fobs, toy cars, and toy vehicle tracks.

 

In this case, the mark merely describes a feature, characteristic or use of applicant’s goods because the goods feature or are for use with GT2 class cars.  The term “GT2” is commonly used in the media to identify a class of race car.  See attached evidence from egmcartech.com, corvettemotorsport.com, planetlemans.com,  autoguide.com, and motorauthority.com referring to GT2 as a class of race car.  Thus, the term GT2 characterizes applicant’s identified automobiles.  Further, applicant’s fobs and toys will feature GT2 models or be for use with GT2 automobiles. 

 

Because GT2 merely describes a feature, characteristic or use of applicant’s identified goods, applicant’s mark is refused registration under Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant cannot overcome the refusal by amending the application to the Supplemental Register, because a mark in an application under §66(a) of the Trademark Act is not eligible for registration on the Supplemental Register.  Trademark Act Section 68(a)(4), 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c); TMEP §§801.02(b), 815, 816.01 and 1904.02(c).

 

Identification of Goods

 

The wording “automobiles and their parts” and “key fobs” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, “automobiles and their parts” encompasses automobile parts classified in other classes such as automobile engine parts classified in Class 7.  Further, “key fobs” encompasses non-metal key fobs in Class 20 and key fobs of common metals in Class 6. 

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods from one existing international class to another.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

 

Therefore, any modification to this wording must identify goods the classification specified in the application for those goods.

 

The following substitute wording is suggested, if appropriate: 

 

Class 12:  Automobiles and their parts, namely, {identify parts in Class 12, e.g., structural parts}

 

Class 14:  Key fobs of {identify material composition of goods in Class 14, e.g., precious metals}

 

Class 28:  Toy cars, toy vehicle tracks

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods 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.

 

Entity Type - Indefinite

 

The application identifies applicant as “stock company,” which is not acceptable as an entity designation in the U.S. because there is no clear U.S. equivalent entity and the entity designation does not appear in Appendix D of the Trademark Manual of Examining Procedure.  See TMEP §803.03(i).  Applicant must indicate the U.S. equivalent of its entity type or provide a description of the nature of the foreign entity.  See id.

 

Acceptable designations for an Aktiengesellschaft include corporation and joint stock company.

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

/Heather Biddulph/

Heather Biddulph

Law Office 104

571-272-8190

heather.biddulph@uspto.gov

 

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.