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: 11/8/2016
INTERNATIONAL REGISTRATION NO. 1288818
This Office action is in response to applicant’s
communication filed on October 11, 2016.
The refusal to register under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), with respect to Reg. Nos. Nos. 3,883,365 for F2, 4,376,960 for F2C, and
4,218,872 for F2X for the goods in Class 12; and Registration No. 2,452,264 for the services in Class 41 are continued and maintained.
The amended identifications of goods and services for Classes 12, 35 and 41 are unacceptable as indefinite and include wording that is beyond the scope of
the original identification. Therefore, the following refusal is issued.
Identification of Goods for Class 12
The amended identification of goods must be clarified because
certain of the wording is indefinite and includes goods beyond the scope of the original identification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format in amending the terms at issue in the amended identification, if accurate:
- “Four-wheel Vehicles, namely land vehicles, all-terrain vehicles, off-road vehicles, and sport utility
vehicles for use in motorsports;” should be amended to include a comma after the word “namely, - “Four-wheel Vehicles, namely, land vehicles, all-terrain vehicles, off-road vehicles, and sport
utility vehicles for use in motorsports;” in Class 12
- “Racing cars, including their components and equipment included in this class excluding rear view mirrors;”
is unacceptable as indefinite. The wording “components and equipment included in this class” must be amended either to “racing cars and structural parts for
therefor, excluding rear view mirrors;” or to specify the components and equipment by their common commercial names, “racing cars and components and equipment for racing cars, namely, _____________
[list the particular “components” and pieces of “equipment” by their common commercial names], excluding rear view mirrors;” in Class 12
- “Tires, wheels, rims, and innertubes specially designed for open-wheel, track racing vehicles;” is
unacceptable because it is beyond the scope of the original identification.
The proposed amendment to the identification is not acceptable because it exceeds the scope of the goods
and/or services in the initial application. See 37 C.F.R. §2.71(a); TMEP §§1402.01(c), 1904.02(c)(iv).
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.
See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Therefore, the original identification in the U.S. application as filed, or as
acceptably amended, remains operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §§1402.01(b),
1402.07(d).
In this case, the application identifies the goods and/or services in the specified class(es) as
follows: wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for
automobiles;”
However, the proposed amendment identifies the following goods and/or services in the specified
class(es): “Tires, wheels, rims, and innertubes specially designed for open-wheel, track racing vehicles;””
The proposed amendment is beyond the scope of the original identification because the original
identification was restricted to wheels and rims for passenger cars, trucks buses, racing cars, and automobiles>? The wording “open-wheel track racing vehicles” is beyond the scope of the original
wording which restricted the nature of the racing “vehicles” to “racing cars;|
Accordingly, applicant may respond by deleting the proposed amendment to the goods and/or services and/or
arguing that the amendment is within the scope of the goods and/or services in the initial application and should remain in the application. See 37 C.F.R. §2.71(a); TMEP §§1402.07(a), (e), 1904.02(c)(iv). If this issue is being made final, applicant may appeal to the Trademark Trial and
Appeal Board under 37 C.F.R. §§2.141, 2.142, or petition the Director under 37 C.F.R. §2.146 if permitted by 37 C.F.R. §2.63(b)(2). TMEP
§1904.02(c)(iv).
Applicant may amend the identification to clarify or limit
the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37
C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e). Additionally, for applications 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); and the classification of goods and/or services may not
be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a
multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP
§1401.03(d).
For assistance with identifying and classifying goods and services in trademark
applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Identification of Services for Class 35
The amended identification of services for Class 35 must be clarified because it is
indefinite for purposes of registration and includes wording that is beyond the scope of the original identification. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may adopt the following format in amending the wording at issue in the identification, if accurate:
- “Promotion of the goods and services of others by means of the initial interest factor leading the public to consider, among a
multitude of competitors, goods or services presented to the public by means of signs, emblems or messages aimed at capturing its attention;” is unacceptable as indefinite. The following wording should be adopted, if accurate, “Promoting the goods and services of others by means of the initial interest factor leading the public to consider, among
a multitude of competitors, goods and services presented to the public by means of signs, emblems and messages designed to capture the public’s attention, namely, marketing services, namely, keyword
advertising provided by means of the Internet in which pre-identified words and phrases generate advertisements and links to websites when entered in a search engine;” in Class 35
- “Promotion of the goods and services of others by means of image transfer, namely, promoting the brand identity of third parties
through print medium, on-line medium;” should be amended to “Transfer advertising, namely, promoting the goods and services of others through the use of positive association with a particular product
and service to create a positive association with a different product and service;” in Class 35
- “Commercial administration assistance in connection motor vehicle racing stables participating in motor vehicle sport
competitions;” is unacceptable as indefinite and should be amended to “commercial business management assistance provided for motor vehicle racing teams participating in motor vehicle sports
competitions;” in Class 35
- “Promoting public awareness of motor vehicle racing teams and motor vehicle racing;” is not acceptable because it is beyond the
scope of the wording in the original identification.
Particular wording in the proposed amendment to the
identification is not acceptable because it exceeds the scope of the identification in the application. See 37 C.F.R. §§2.32(a)(6), 2.71(a);
TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those
originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06.
Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
In this case, the application originally identified the goods and/or services as follows: “commercial administration of participation of motor racing stables to motor sport competitions and promotion to the public and interested media of support for said
teams;”
However, the proposed amendment identifies the following goods and/or services: “Promoting public awareness of motor vehicle racing teams and motor vehicle racing.”
This portion of the proposed amendment is beyond the scope of the original identification because the
original identification was restricted to promotion to the public and interested media.
The Examining Attorney is aware that this wording was suggested in the original Office Action and apologizes for any
inconvenience caused by this requirement.
The following wording is suggested “promoting a public interest in the support of motor racing teams to the public and interested
media;” in Class 35
- “Data input and processing services” should be amended to “data input, namely, compiling information into computer databases;
data processing services;” in Class 35
- “Computer file management featuring digital file management comprised of images and video footage, available for a single use in
connection with traditional advertising and advertisements used for market research in the nature of conducting consumer tracking behaviour research and consumer trend analysis, in connection with a
license agreement;” should be amended to “Computer file management of a digital file comprised of a portfolio consisting of images and video footage available for a single use in traditional
advertising and advertisements used in market research relating to conducting consumer tracking behavior research and consumer trend analysis, all of the foregoing pursuant to a license agreement;”
in Class 35
Applicant may amend the identification to clarify or limit
the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37
C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e). Additionally, for applications 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); and the classification of goods and/or services may not
be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a
multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP
§1401.03(d).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online
searchable U.S.
Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Identification of Services for Class 41
The amended identification of services for Class 41 must be clarified because it is
indefinite for purposes of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format
in amending the identification, if accurate:
- “Television show production in the field of sporting entertainment;” is beyond the scope of
the original identification and must be deleted.
The proposed amendment to the identification is not
acceptable because it exceeds the scope of the goods and/or services in the initial application. See 37 C.F.R. §2.71(a); TMEP §§1402.01(c),
1904.02(c)(iv). Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as
acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Therefore, the original
identification in the U.S. application as filed, or as acceptably amended, remains operative for purposes of future amendment. See 37 C.F.R.
§2.71(a); TMEP §§1402.01(b), 1402.07(d).
In this case, the application identifies the goods and/or services in the specified class(es) as
follows: “Televised sporting and cultural entertainment:
However, the proposed amendment identifies the following goods and/or services in the specified
class(es): “Television show production in the field of sporting entertainment;”
The proposed amendment is beyond the scope of the original identification because it extends “televised
sporting and cultural entertainment” to the production of entertainment.
The April 11, 2016 Office Action advised the Applicant as follows regarding the wording “televised sporting
and cultural entertainment:”
“Televised sporting and cultural entertainment;” should be amended to “Entertainment services, namely,
televises appearances by _______ [indicate the types of individuals – such as sports celebrity, race car driver, etc. – whatever is accurate and compete] for sporting and cultural entertainment
purposes;” in Class 41
The April 11, 2016 Office Action advised the Applicant as follows regarding the wording “televised sporting
and cultural entertainment:”
“Televised sporting and cultural entertainment;” should be amended to “Entertainment services, namely,
televises appearances by _______ [indicate the types of individuals – such as sports celebrity, race car driver, etc. – whatever is accurate and compete] for sporting and cultural entertainment
purposes;” in Class 41
- “Autosports” and “autosporting’ in the amended identification of services for Class 41. As demonstrated by the attached print
out from the Oxford English Dictionary, available at OED.COM, “autosport” is not a word in the English language. (See also attached print outs
from WORDNIK.COM). However, it appears to be a slang term or an expression that is used in the vernacular. Therefore, for each time the expression “autosport” or
“autosporting” (or any version thereof) appears in the identification of services for Class 41, this wording must be amended to “motor sports in the nature of autosports” In particular, Applicant’s attention is invited to the following wording:
organization of exhibitions for cultural and educational purposes in the field of autosports;
betting and gambling services for autosports events
entertainment services provided during autosporting events or concerning autosporting events, namely, live music
concerts
organization of autosports competitions
providing autosports facilities
entertainment services provided in connection with an autosport racing circuit, namely, organization of motor vehicle races and
motor vehicle race sporting and cultural events;
rental of audio and video equipment for autosporting events
production of films, other than advertising films, for autosporting events
production of sound recordings and video recordings for autosporting events
distribution of motion picture films, sound recordings and video recordings in relation to autosporting events
rental of sound recordings and video recordings for autosporting events
coverage of radio broadcast and televised sports events, namely, news reporting services in the field of autosports featuring
radio broadcast and televised sports events
production of television and radio programs and of videotapes featuring autosports;
arranging ticked reservations for autosporting events and entertainment shows;
timing of autosports events
entertainment services, namely, providing a website for on-line betting services for autosports events;
information on entertainment and education in the field of autosports, provided on line or from a data bank
providing non-downloadable on-line electronic publications in the nature of books, magazines, newsletters, in the field of
autosports;
publication of books, magazines, texts other than advertising texts and periodicals, in the field of
autosports;
publication of texts other than advertising texts, including regulations and standards relating to automotive transport and
autosports
providing information in the field of autosports and autosporting events
rental of sound recordings and image-recorded magnetic tapes for autosports events
production of audio recording for autosports events
providing on-line information in the field of autosporting events by means of a computer database or the
Internet
editing and publishing services, namely, copy, film, photo, video, written text, editing and publishing of books, magazines,
electronic publications, reviews, web magazines in the field of autosports
providing information about entertainment in the field of autosports;
providing recognition and incentives by the way of awards ceremonies and gala ceremonies to demonstrate excellence in the field
of autosports for entertainment purposes
- “Rental of computer game programs and software and providing on-line interactive computer games via a computer;” is not
acceptable because it appears to contain an inadvertent typographical error. This wording should be amended to “Rental of computer game programs and software and providing on-line interactive
computer games via a computer network;” in Class 41
- “Arranging ticked reservations for sporting events and entertainment shows;” should be amended to
“arranging ticket reservations for sporting events and entertainment shows;” in Class 41
- “Entertainment services, namely, providing temporary use on non-downloadable interactive games;”
should be amended to “entertainment services, namely, providing temporary use of non-downloadable interactive games;” in Class 41
- “Publication of texts other than advertising texts including regulations and standards relating to automotive transport and motorsports;” is
indefinite for purposes of registration because “regulations” and “standards” are not types of publications. This wording should be amended to “Publication of texts other than advertising texts
featuring regulations and standards relating to automotive transport and motorsports;” in Class 41
- “Education services, namely, providing training programs designing, educational proficiency examinations, and educational examination services in the
field of vehicle driving proficiency and providing certifications of aptitude and international driving licenses in connection therewith;” must be amended to delete the comma after the word
“designing.” The following identification is suggested and should be adopted, if accurate, “Education services, namely, providing training programs designing educational proficiency examinations, and
educational examination services in the field of vehicle driving proficiency and providing certifications of aptitude and international driving licenses in connection therewith;” in Class
41
Applicant may amend the identification to clarify or limit
the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37
C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e). Additionally, for applications 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); and the classification of goods and/or services may not
be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a
multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP
§1401.03(d).
For assistance with identifying and classifying goods and services in trademark
applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Assistance
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. §§2.62(c), 2.191; TMEP §§304.01-.02, 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.
/Susan A. Richards/
Susan A. Richards
Law Office 103
(571) 272-8266
Susan.Richards@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the
status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.