Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79122004 MACAN(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79122004) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This responds to the Office Action dated January 10, 2013, in which the Examining Attorney refused registration of the mark under Section 2(d) because he believes that Applicant's mark when viewed in connection with its goods is likely to cause confusion, cause mistake or to deceive with regard to the mark shown in U.S. Registration No. 3,921,928. Although the refusal of registration was not explicitly limited to the goods falling within International Class 14, when comparing Applicant's goods to the goods identified in Reg. No. 3,921,928, the Examining Attorney only referenced the goods in International Class 14. Therefore, Applicant is assuming that the refusal of registration only applies to International Class 14. Accordingly, Applicant has deleted the goods in International Class 14 from the application and will not present arguments as to the reasons why its mark is not likely to cause confusion with the mark identified in Reg. No. 3,921,928 with respect to each and every good and service within the remaining 26 classes in the application. However, if Applicant is mistaken and the refusal of registration applies to all 27 classes of goods and services, Applicant respectfully requests that it be notified of this fact and it will supplement this response prior to the 6 month deadline for response.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 014 for Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; key fobs; key straps; cufflinks, tie pins; badges (jewellery); pins (jewellery); watch cases

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Bleaching preparations and other substances for laundry use; Bleaching preparations and other substances for laundry use namely, laundry detergents and laundry bleach; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotionsClass 003 for Bleaching preparations and other substances for laundry use namely, laundry detergents and laundry bleach; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Hand tools; implements (hand operated) for use in agriculture, horticulture and forestry, for the construction of machines, apparatus and vehicle and for the building industry; cutlery; side arms, razors
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Hand tools; Hand tools namely, screw drivers, pliers, cutters, rammers, wrenches, hammers, chisels, drills, bits for drills, planers, planes, saws, blades for saws, sanders, engravers, mauls, hand-operated pumps, hand-operated riveting tools, multi-purpose shears, metal-cutting scissors, punches, dies, reamers, taps, ratchet wrenches, scrapers, foundry ladles, sharpening steels, files, adzes, augers, awls, clamps, mitre boxes, rasps, tongs, blade sharpening instruments, caulking guns, borers, vices, crimping irons, branding irons, molding irons, manually operated grinding wheels and manually operated mill cutters; implements (hand operated) for use in agriculture, horticulture and forestry, for the construction of machines, apparatus and vehicle and for the building industry; hand operated implements namely, drillers, welding apparatus, soldering rots for use in agriculture, horticulture and forestry, for the construction of machines, apparatus and vehicle and for the building industry; cutlery; side arms, razors; side arms, not including firearms, namely, hunting knives, razorsClass 008 for Hand tools namely, screw drivers, pliers, cutters, rammers, wrenches, hammers, chisels, drills, bits for drills, planers, planes, saws, blades for saws, sanders, engravers, mauls, hand-operated pumps, hand-operated riveting tools, multi-purpose shears, metal-cutting scissors, punches, dies, reamers, taps, ratchet wrenches, scrapers, foundry ladles, sharpening steels, files, adzes, augers, awls, clamps, mitre boxes, rasps, tongs, blade sharpening instruments, caulking guns, borers, vices, crimping irons, branding irons, molding irons, manually operated grinding wheels and manually operated mill cutters; hand operated implements namely, drillers, welding apparatus, soldering rots for use in agriculture, horticulture and forestry, for the construction of machines, apparatus and vehicle and for the building industry; cutlery; side arms, not including firearms, namely, hunting knives, razors

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer games; mobile phones, bags for mobile phones, carriers adapted for mobile phones, devices for hands-free use of mobile phones, rechargeable accumulators (batteries) for mobile phones; cases adapted for computers and tablet computers; navigation apparatus for vehicles; glasses, sunglasses, spectacle cases; fire resistant protective clothing for racing drivers, in particular gloves, shoes, jumpsuits; protective helmets, protective helmets for sports; data processing devices; data carriers equipped with programs; electric apparatus and instruments; electronic devices, particularly navigation apparatus
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking and supervision, life-saving and teaching apparatus and instruments namely, integrated navigation computer systems for automobiles consisting of a liquid crystal display, computer terminal, operating system software, CD-ROM drive, telephone, cassette player, radio and satellite controlled global positioning system with integrated antenna, satellite receiver and electrical cable; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; ; apparatus for recording, transmission or reproduction of sound or images; apparatus for recording, transmission or reproduction of sound or images namely, cameras, radios, televisions, audio tape cassette recorders, videotape cassette recorders; magnetic data carriers, recording discs; blank magnetic data carriers, blank recording discs; compact discs, DVDs and other digital recording media; blank compact discs, DVDs and other digital recording media namely, USB flash drives; prerecorded data carriers, compact discs and digital video discs, all containing information relating to automobiles and automotive parts; mechanisms for coin-operated apparatus; computer software; cash registers, calculating machines, data processing equipment, computers; computer software featuring instruction in the area of automobiles and automotive parts; computer games; fire-extinguishing apparatus; mobile phones, bags for mobile phones, carriers adapted for mobile phones, devices for hands-free use of mobile phones, rechargeable accumulators (batteries) for mobile phones; computer game programs; mobile phones, bags for mobile phones, carriers adapted for mobile phones, computer hardware devices with integrated software for hands-free use of mobile phones, rechargeable accumulator batteries for mobile phones; cases adapted for computers and tablet computers; navigation apparatus for vehicles; glasses, sunglasses, spectacle cases; fire resistant protective clothing for racing drivers, in particular gloves, shoes, jumpsuits; data processing devices; protective helmets, protective helmets for sports; data carriers equipped with programs; data processing devices namely, computers; electric apparatus and instruments; data carriers equipped with interactive multimedia computer game programs, data carriers equipped with interactive video games of virtual reality; electronic devices, particularly navigation apparatusClass 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking and supervision, life-saving and teaching apparatus and instruments namely, integrated navigation computer systems for automobiles consisting of a liquid crystal display, computer terminal, operating system software, CD-ROM drive, telephone, cassette player, radio and satellite controlled global positioning system with integrated antenna, satellite receiver and electrical cable; ; apparatus for recording, transmission or reproduction of sound or images namely, cameras, radios, televisions, audio tape cassette recorders, videotape cassette recorders; blank magnetic data carriers, blank recording discs; blank compact discs, DVDs and other digital recording media namely, USB flash drives; prerecorded data carriers, compact discs and digital video discs, all containing information relating to automobiles and automotive parts; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software featuring instruction in the area of automobiles and automotive parts; fire-extinguishing apparatus; computer game programs; mobile phones, bags for mobile phones, carriers adapted for mobile phones, computer hardware devices with integrated software for hands-free use of mobile phones, rechargeable accumulator batteries for mobile phones; cases adapted for computers and tablet computers; navigation apparatus for vehicles; glasses, sunglasses, spectacle cases; fire resistant protective clothing for racing drivers, in particular gloves, shoes, jumpsuits; protective helmets, protective helmets for sports; data processing devices namely, computers; data carriers equipped with interactive multimedia computer game programs, data carriers equipped with interactive video games of virtual reality

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper, cardboard and goods made from these materials, stickers, printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; document files, calendars, pen holders; organizers (calendars); pencil cases; flyers; leather organizers for accommodating calendars, business cards and notebooks
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Paper, cardboard and goods made from these materials, stickers, printed matter; Paper, cardboard and goods made from these materials, namely, stickers, printed matter namely, books, magazines, manuals and technical drawings, brochures and pamphlets containing information relating to automobiles and automotive parts; bookbinding material; bookbinding ¶
material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); typewriters and office requisites except furniture; instructional and teaching material (except apparatus); instructional and teaching material relating to automobiles for drivers and technicians; plastic materials for packaging (not included in other classes); plastic materials for packaging not included in other classes namely, plastic bags; printers' type; printing blocks; document files, calendars, pen holders; organizers (calendars); organizers; pencil cases; flyers; flyers relating to automobiles, automobile parts and motor sport events; leather organizers for accommodating calendars, business cards and notebooks; leather personal organizers for accommodating calendars, business cards and notebooksClass 016 for Paper, cardboard and goods made from these materials, namely, stickers, printed matter namely, books, magazines, manuals and technical drawings, brochures and pamphlets containing information relating to automobiles and automotive parts; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites except furniture; instructional and teaching material relating to automobiles for drivers and technicians; plastic materials for packaging not included in other classes namely, plastic bags; printers' type; printing blocks; document files, calendars, pen holders; organizers ; pencil cases; flyers relating to automobiles, automobile parts and motor sport events; leather personal organizers for accommodating calendars, business cards and notebooks

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Leather and imitations of leather, and goods made of these materials, particularly trunks, bags and small leather articles, included in this class; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags, included in this class; clothing for animals, toilet bags, rucksacks, handbags, wallets, briefcases, key cases
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Leather and imitations of leather, and goods made of these materials, particularly trunks, bags and small leather articles, included in this class; Leather and imitations of leather, and goods made of these materials, namely, trunks, bags and small leather articles, included in this class; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags, included in this class; bags, included in this class namely, handbags, sport bags, traveling bags, garment bags for travel, cosmetic bags and toiletry bags, both sold empty; clothing for animals, toilet bags, rucksacks, handbags, wallets, briefcases, key cases; clothing for animals, rucksacks, handbags, wallets, briefcases, key casesClass 018 for Leather and imitations of leather, and goods made of these materials, namely, trunks, bags and small leather articles, included in this class; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags, included in this class namely, handbags, sport bags, traveling bags, garment bags for travel, cosmetic bags and toiletry bags, both sold empty; clothing for animals, rucksacks, handbags, wallets, briefcases, key cases

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; bottle closures not of metal
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; goods not included in other classes of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics namely, picnic baskets, non-metal key fobs, coat hangers, stands for point-of-purchase displays, flags made of plastic; bottle closures not of metalClass 020 for Furniture, mirrors, picture frames; goods not included in other classes of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics namely, picnic baskets, non-metal key fobs, coat hangers, stands for point-of-purchase displays, flags made of plastic; bottle closures not of metal

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; wine and champagne coolers; insulated beverage cups; bottle openers; money boxes; ice cube moulds; perfume vaporizers
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Household or kitchen utensils and containers; Household or kitchen utensils namely, spatulas, strainers, mincers, citrus presses, cookie and pancake molds, herb mills, wire baskets, metal trays and wine bottle stoppers and containers; combs and sponges; combs and hairbrushes; brushes (except paint brushes); brushes except paint brushes for household use and for cleaning vehicles; brush-making materials; articles for cleaning purposes; articles for cleaning purposes namely, brooms, sponges, clothes for household use and cleaning vehicles; steelwool; unworked or semi-worked glass (except glass used in building); unworked or semi-worked glass except glass used in building; glassware, porcelain and earthenware not included in other classes; beverage glassware and articles made of glassware, porcelain and earthenware not included in other classes namely, vases, candle holders, piggy banks, commemorative plates, bowls, mugs, coasters, flasks for perfume sold empty, perfume atomizers sold empty; wine and champagne coolers; insulated beverage cups; bottle openers; money boxes; money boxes included in this class; ice cube moulds; perfume vaporizers; perfume vaporizers sold emptyClass 021 for Household or kitchen utensils namely, spatulas, strainers, mincers, citrus presses, cookie and pancake molds, herb mills, wire baskets, metal trays and wine bottle stoppers and containers; combs and hairbrushes; brushes except paint brushes for household use and for cleaning vehicles; brush-making materials; articles for cleaning purposes namely, brooms, sponges, clothes for household use and cleaning vehicles; steelwool; unworked or semi-worked glass except glass used in building; beverage glassware and articles made of glassware, porcelain and earthenware not included in other classes namely, vases, candle holders, piggy banks, commemorative plates, bowls, mugs, coasters, flasks for perfume sold empty, perfume atomizers sold empty; wine and champagne coolers; insulated beverage cups; bottle openers; money boxes included in this class; ice cube moulds; perfume vaporizers sold empty

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, footwear, headgear; dress handkerchiefs; scarfs; gloves; belts; leather clothing
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Clothing, footwear, headgear; Clothing, namely, anoraks, beachwear, blazers, blouses, blousons, body suits, cardigans, coats, dresses, foul weather gear, rain jackets, rain pants, wind pants, wind shirts, wind sweaters, infant wear, jackets, jeans, jogging suits, leather coats, leather jackets, overalls, pants, parkas, polo shirts, scarves, shirts, shorts, Bermuda shorts, ski wear, skirts, slacks, sleepwear, snow suits, socks, suits, long-sleeved pullovers, sweatshirts, sweaters, T-shirts, tennis wear, neckties, tights, tops, track suits, trousers, underwear, vests and wrist bands, footwear, headgear namely, hats, caps, sun visors and sweat bands; dress handkerchiefs; scarfs; gloves; belts; leather clothingClass 025 for Clothing, namely, anoraks, beachwear, blazers, blouses, blousons, body suits, cardigans, coats, dresses, foul weather gear, rain jackets, rain pants, wind pants, wind shirts, wind sweaters, infant wear, jackets, jeans, jogging suits, leather coats, leather jackets, overalls, pants, parkas, polo shirts, scarves, shirts, shorts, Bermuda shorts, ski wear, skirts, slacks, sleepwear, snow suits, socks, suits, long-sleeved pullovers, sweatshirts, sweaters, T-shirts, tennis wear, neckties, tights, tops, track suits, trousers, underwear, vests and wrist bands, footwear, headgear namely, hats, caps, sun visors and sweat bands; dress handkerchiefs; scarfs; gloves; belts; leather clothing

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toy vehicles; model cars; golf clubs; golf balls
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Games and playthings; Games and playthings namely, parlor games, playing cards and cases for playing cards, chess sets, toy model racing car sets comprised of toy model cars, race track, speed controllers and crash barriers, toy model hobby craft sets for making toy cars, toy cars, toy vehicle tracks; gymnastic and sporting articles not included in other classes; gymnastic and sporting articles not included in other classes namely, tennis rackets, golf bags, skis, snow boards, skate boards, inline skates, jump ropes, non-motorized push scooters; decorations for Christmas trees; toy vehicles; model cars; golf clubs; golf ballsClass 028 for Games and playthings namely, parlor games, playing cards and cases for playing cards, chess sets, toy model racing car sets comprised of toy model cars, race track, speed controllers and crash barriers, toy model hobby craft sets for making toy cars, toy cars, toy vehicle tracks; gymnastic and sporting articles not included in other classes namely, tennis rackets, golf bags, skis, snow boards, skate boards, inline skates, jump ropes, non-motorized push scooters; decorations for Christmas trees; toy vehicles; model cars; golf clubs; golf balls

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Tobacco; smokers' articles; matches; tobacco goods; cigarettes; cigars; cigarillos; lighters for smokers
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Tobacco; smokers' articles; smokers' articles namely, ash trays, cigarette holders and smoking pipes; matches; tobacco goods; tobacco goods namely, snuff boxes and tobacco pouches; cigarettes; cigars; cigarillos; lighters for smokersClass 034 for Tobacco; smokers' articles namely, ash trays, cigarette holders and smoking pipes; matches; tobacco goods namely, snuff boxes and tobacco pouches; cigarettes; cigars; cigarillos; lighters for smokers

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; business management; business administration; office functions; retail and wholesale services with regard to vehicles, particularly motor vehicles and electric vehicles, apparatus for locomotion by land, air or water, motors for land vehicles, parts of motor vehicles and electro vehicles
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Advertising; Advertising services; business management; business administration; business administration consultation; office functions; providing office functions; retail and wholesale services with regard to vehicles, particularly motor vehicles and electric vehicles, apparatus for locomotion by land, air or water, motors for land vehicles, parts of motor vehicles and electro vehicles; retail and wholesale store services featuring vehicles, particularly motor vehicles and electric vehicles, apparatus for locomotion by land, air or water, motors for land vehicles, parts of motor vehicles and electro vehiclesClass 035 for Advertising services; business management; business administration consultation; providing office functions; retail and wholesale store services featuring vehicles, particularly motor vehicles and electric vehicles, apparatus for locomotion by land, air or water, motors for land vehicles, parts of motor vehicles and electro vehicles

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance; financial affairs; monetary affairs; real estate affairs; financing, particularly of leasing contracts; credit brokerage; insurances, particularly in the automobiles business
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Insurance; Insurance namely, underwriting accident insurance; financial affairs; financial affairs namely, financial consultation; monetary affairs; monetary affairs namely, monetary exchange; real estate affairs; real estate affairs namely, real estate management services; financing, particularly of leasing contracts; financing, particularly financing of leasing contracts; credit brokerage; credit brokerage services; insurances, particularly in the automobiles business; insurance services, particularly underwriting extended warranty contracts in the automobiles businessClass 036 for Insurance namely, underwriting accident insurance; financial affairs namely, financial consultation; monetary affairs namely, monetary exchange; real estate affairs namely, real estate management services; financing, particularly financing of leasing contracts; credit brokerage services; insurance services, particularly underwriting extended warranty contracts in the automobiles business

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Building construction; repair, namely repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; conversion and tuning of production automobiles and their engines; cleaning of motor vehicles; providing information relating to vehicle repair; tuning and cleaning of automobiles; installation services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Building construction; repair, namely repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; conversion and tuning of production automobiles and their engines; conversion and tuning of production automobiles and their engines namely, turning standard cars into sport and racing cars; cleaning of motor vehicles; providing information relating to vehicle repair; tuning and cleaning of automobiles; engine tuning and cleaning of automobiles; installation servicesClass 037 for Building construction; repair, namely repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; conversion and tuning of production automobiles and their engines namely, turning standard cars into sport and racing cars; cleaning of motor vehicles; providing information relating to vehicle repair; engine tuning and cleaning of automobiles

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Transport; packaging and storage of goods; travel arrangement and organisation; vehicle rental; leasing of motor vehicles
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Transport; Transport of automobiles and automobile parts; packaging and storage of goods; packaging and storage of goods namely, automobiles and automobile parts; travel arrangement and organisation; travel arrangement and organization; vehicle rental; leasing of motor vehiclesClass 039 for Transport of automobiles and automobile parts; packaging and storage of goods namely, automobiles and automobile parts; travel arrangement and organization; vehicle rental; leasing of motor vehicles

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education; providing of training; entertainment; sporting and cultural activities; driving schools, in particular sport driving schools (education, training); motor sport events
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Education; Education services namely, providing courses, workshops and driving schools in the fields of sports car racing, high performance driving, driver safety, and automotive repair; providing of training; providing of driver safety and automotive repair training; entertainment; entertainment in the nature of personal appearances by sports celebrities performing and competing in motor sport events; sporting and cultural activities; organizing and conducting sporting and cultural events; driving schools, in particular sport driving schools (education, training); driving schools, in particular sport driving schools; motor sport events; organizing and conducting motor sport eventsClass 041 for Education services namely, providing courses, workshops and driving schools in the fields of sports car racing, high performance driving, driver safety, and automotive repair; providing of driver safety and automotive repair training; entertainment in the nature of personal appearances by sports celebrities performing and competing in motor sport events; organizing and conducting sporting and cultural events; driving schools, in particular sport driving schools; organizing and conducting motor sport events

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; services of engineers; technical research, development and consulting, particularly in the field of vehicle and engine construction; preparation of technical reports; creation of programs for data processing; graphic arts designing; construction drafting; quality control services for certification purposes, testing, analysis and evaluation of the services of others for the purpose of certification
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Scientific and technological services and research and design relating thereto; Scientific and technological services namely, technical research for others in the field of vehicle and engine construction and manufacture, and research and design relating thereto specifically development of new technology for others relating to vehicles and engines, design consultancy in the field of vehicle and engine construction; industrial analysis and research services; industrial analysis and research services in the field of vehicle and engine manufacture; design and development of computer hardware and software; services of engineers; technical research, development and consulting, particularly in the field of vehicle and engine construction; technical research, development and technological consulting services, particularly in the field of vehicle and engine construction; preparation of technical reports; preparation of technical reports for others namely, plans and engineering drawings in the field of vehicle and engine construction and manufacture; creation of programs for data processing; creation of computer programs for data processing; graphic arts designing; construction drafting; quality control services for certification purposes, testing, analysis and evaluation of the services of others for the purpose of certification; developing quality control services for certification purposes, testing, analysis and evaluation of the services of others for the purpose of certificationClass 042 for Scientific and technological services namely, technical research for others in the field of vehicle and engine construction and manufacture, and research and design relating thereto specifically development of new technology for others relating to vehicles and engines, design consultancy in the field of vehicle and engine construction; industrial analysis and research services in the field of vehicle and engine manufacture; design and development of computer hardware and software; services of engineers; technical research, development and technological consulting services, particularly in the field of vehicle and engine construction; preparation of technical reports for others namely, plans and engineering drawings in the field of vehicle and engine construction and manufacture; creation of computer programs for data processing; graphic arts designing; construction drafting; developing quality control services for certification purposes, testing, analysis and evaluation of the services of others for the purpose of certification

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Services for providing food and drink; temporary accommodation
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Services for providing food and drink; temporary accommodation; providing temporary housing accommodationsClass 043 for Services for providing food and drink; providing temporary housing accommodations

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ADDITIONAL STATEMENTS
Translation
The English translation of Macan in the mark is tiger.


Significance of wording, letter(s), or numeral(s)
Macan appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Jana L. France/     Date: 02/20/2013
Signatory's Name: Jana L. France
Signatory's Position: Attorney of Record, MN bar member.

Signatory's Phone Number: 763-208-9847

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 79122004
Internet Transmission Date: Wed Feb 20 17:42:27 EST 2013
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20130220174227771
677-79122004-500236262c53b2385d3ae12b3f5
5e6fe9609da17c99d8e274c69638613491241c0-
N/A-N/A-20130220165415432849