Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and services in the application:

propulsion mechanisms for land vehicles; couplings for land vehicles; vehicle chassis; non-skid devices for vehicle tires, repair outfits for inner tubes, adhesive rubber patches for repairing inner tubes, spikes for tires, anti-skid chains for vehicles, suspension shock absorbers for vehicles, shock absorbing springs for vehicles; motor cars, motorbuses; caravans; and semi-trailers for vehicles, omnibuses [all from class 12];

scale model automobiles; (toys); included in this class, scooters toys for children; apparatus for games and amusement, video game machines, portable games with liquid crystal displays [all from class 28];

Retail and wholesale services concerning motor vehicles and their parts and fittings; retail and wholesale services for mail-order business concerning motor vehicles and their parts and fittings; retail and wholesale services via Internet concerning motor vehicles and their parts and fittings; retail and wholesale services via teleshopping concerning motor vehicles and their parts and fittings; bringing together, but not transporting, a variety of motor vehicles and parts and fittings therefore for the benefit of others, thereby enabling customers to view and purchase the goods in a retail outlet; negotiation of contracts for the benefit of others about sale and purchase of motor vehicles and their parts and fittings; business administration and organizational management of vehicles fleets for others [all of class 35];

Reconstruction, dismantling, construction of vehicles and their parts and motors and their parts for others, vehicle repair in the course of vehicle breakdown service; customized carrying out of alterations on body, chassis and motor of automobiles (tuning), included in this class [all from class 37].

See 15 U.S.C. §1141h(c).

See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.

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).

IDENTIFICATION OF GOODS

The identification of goods is indefinite and must be clarified because “propulsion mechanisms for land vehicles” is not recognized, and seems to be encompassed by “motors and engines for land vehicles;” “couplings for land vehicles” is unclear; “vehicle chassis” is unclear; “non-skid devices for vehicle tires” is not recognized; “repair outfits for inner tubes” is unclear; “spikes for tires” is unclear; “caravans” is not recognized; “omnibuses” is not recognized, and is encompassed by “buses;” “Scale model vehicles” encompasses “automobiles” (in 28); “apparatus for games and amusement” requires much more specificity; “video game machines” requires more specificity; “portable games” must be “hand-held games;” extraneous and superfluous wording needlessly lengthens and obfuscates the identification; the lack of proper punctuation also causes the identification to be unclear. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

“Motorized land vehicles; motors and engines for land vehicles; clutches for land vehicles; shaft couplings for land vehicles; chassis for motor vehicles; vehicle bodies; pneumatic tires; inner tubes for pneumatic tires; anti-skid chains for vehicle tires; tire repair patches; tires for vehicle wheels; anti-skid studs for vehicle tires; vehicle wheel rims; solid tires for vehicle wheels; vehicle wheels; automobile wheel hubs; shock absorbers and shock absorbing springs for motor cars; head-rests for vehicle seats; vehicle seats; rearview mirrors; anti-theft alarms and devices for land vehicles; cigar lighters for automobiles; cars; motor cars for transport on land; automobiles; buses; trucks; trailers; semi-tractor trailers; trailer hitches; tractors; motorcycles; mopeds,” in class 12;

“Scale model vehicles; toy automobiles; scale model kits; toy vehicles for children; toy scooters; playing cards; stuffed toys; amusement apparatus adapted for use with an external display screen or monitor; game apparatus, namely, bases, bats, and balls for playing indoor and outdoor games; video game machines for use with televisions, external display screens or monitors; hand-held games with liquid crystal displays,” in class 28.

Applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(a).

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because “retail and wholesale services” must specify “store” or other means of providing the services; “teleshopping” is subsumed by the store services; “bringing together, but not transporting, a variety of motor vehicles and parts and fittings therefore for the benefit of others” is also subsumed by the store services; “negotiation of contracts…” is not recognized; “business administration and organizational management…” is not correctly set forth; “reconstruction, repair, servicing, dismantling, cleaning, maintenance and varnishing…” is a jumbled mess of terms; “construction of vehicles…” is an unacceptable construct; “vehicle repair in the course of vehicle breakdown” is confusing in that it is redundant of “repair, servicing and maintenance…;” “customized carrying out…” is an unacceptable construct subsumed by “custom rebuilding...” See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

“Retail and wholesale store, online retail and wholesale store and mail order services featuring motor vehicles and their parts and fittings; arranging of buying and selling contracts for third parties concerning motor vehicles and their parts and fittings; business administration and management of vehicles fleets for others,” in class 35;

“Repair, modification, servicing and maintenance of vehicles, vehicle motors and parts for the foregoing; vehicle cleaning; varnishing of vehicles, vehicle motors and parts for the foregoing; custom rebuilding of existing land vehicles and structural parts therefor,” in class 37.

Applicant must rewrite the identification of services in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(a).

ONLINE ID MANUAL

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

SECTION 66(A) CONSIDERATIONS

An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or 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 §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

/Ira Goodsaid/

Law Office 101

571-272-9166

ira.goodsaid@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.