UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 79212170
MARK: DIVA
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: VERY CARS
|
|
OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1355252
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:
All of Class 12; and
“Window tinting by surface coating; stripping; assembly of vehicles,” in International Class 40.
See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
These potential refusals apply to Class 12.
The filing dates of pending U.S. Application Serial Nos. 86032788, 87254046, 87254058, 87254069 and 87254084 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant Must Amend The Identification
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and services may be classified in several international classes, any modification to this wording must identify goods and services in International Classes 12 and 40 only, the classes specified in the application. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following identification, if accurate:
“Vehicles, namely, {specify particular Class 12 goods, e.g., automobiles, airplanes and boats}; apparatus for locomotion by land, air or water namely, {specify particular Class 12 goods, e.g., automobiles, airplanes and boats}; automobile engines; transmissions and clutches for land vehicles; brakes for vehicles; braking systems for vehicles; command and control parts and devices for brakes and braking systems for vehicles, namely, {specify particular Class 12 goods; “brake controllers” are in Class 9 and therefore cannot be added to this application}; safety belts for passenger vehicle seats; accessories for vehicle equipping or decoration, namely, hoods, doors, bumpers, steering wheels, windshields, windows, hoods for vehicles, gearboxes, axles, wheels, wheel rims, tires, inner tubes for vehicles tires, anti-skid spikes for vehicle tires, hub caps, balance weights for wheels, air pumps for automobiles, driving chains for land vehicles, seats for automobiles, fitted seat covers, child safety seats, headrests for seats, trailer hitches, luggage racks, ski racks; electric and/or electronic power steering units for land vehicles; electronic power suspension systems for land vehicles; steering wheel locks; horns for land vehicles; windshield wipers being vehicle parts and components thereof, namely, windshield wiper blades; gas tank caps with or without locks for land vehicles; vehicle door handles; reversing warning alarms for vehicles; gearboxes for land vehicles; hydraulic circuits for vehicles; upholstery for vehicles; automotive windshields comprising a shade screen for viewing data and images; rearview mirrors for automobiles with video camera, display and signal lights; turbines for land vehicles; robotic gearboxes for land vehicles; electric steering wheel locks,” in International Class 12; and
“Chromium plating of vehicles; car window tinting by surface coating; leather staining; {It is unclear what is meant by “stripping.” Applicant must provide acceptable amended wording that is properly classified in Class 12 and within the scope of the original identification}; vehicle body tin plating; cloth dyeing; vehicle recycling; vehicle body sandblasting; assembly of vehicles for others,” in International Class 40.
For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods and services identified above, in the beginning of this Office action, will be deleted from the application.
In such case, the application will then proceed only with the following services:
“Chromium plating of vehicles; leather staining; vehicle body tin plating; cloth dyeing; vehicle recycling; vehicle body sandblasting,” in International Class 40.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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). 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 U.S. commonwealths or U.S. territories. 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: http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).
Applicant is invited to contact the assigned examining attorney with any questions about the substance of this action.
Trademark Examining Attorney
Law Office 115
571-270-1528
katherine.chang@uspto.gov
TO RESPOND: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp and choose option #1. 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 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.