Offc Action Outgoing

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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE:

INTERNATIONAL REGISTRATION NO. 1380372

INTRODUCTION

This Office action is supplemental to and supersedes the previous Office action issued on December 20, 2017 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Amendment To Identification Exceeds Scope. See TMEP §§706, 711.02.

In a previous Office action(s) dated December 20, 2017, the applicant was required to satisfy the following requirement(s): Identification Of Goods And Services; Disclaimer Required.

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Disclaimer Required. See TMEP §713.02.

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE: Partial Requirement: Amendment To Identification Exceeds Scope

• Identification Of Goods And Services

Applicant must respond to all issues raised in this Office action and the previous December 20, 2017 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).

PARTIAL REQUIREMENT: AMENDMENT TO IDENTIFICATION EXCEEDS SCOPE

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

The proposed amendment to the identification of goods in Class 7 is not acceptable because it exceeds the scope of the goods in the initial application. See 37 C.F.R. §2.71(a); TMEP §§1402.01(c), 1904.02(c)(iv). Applicant’s goods 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 U.S. application identifies specific types of machinery in Class 7.

However, the proposed amendment identifies the following goods in the specified class: “machines.”

The proposed amendment is beyond the scope of the original identification because the original identification specified types of machines or stated that they were "generic machine parts". The amendment broadens this entry to cover any type of machine.

Accordingly, applicant may respond by deleting the proposed amendment to the goods and/or arguing that the amendment is within the scope of the goods 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).

IDENTIFICATION OF GOODS AND SERVICES

The wording below in the identification of goods and/or services in International Classes is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services 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/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in assigned International Class only, the respective class specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

Class 7:

"powertrains and generic machine parts, namely, distributor rotors, distributor caps, coils, valve covers, engine cases, engine bearings, cylinder heads for engines, rocker arms, push rods, pistons, piston rings, oil coolers, crankcase breathers, oil tank plugs and caps, connecting rods, fuel injection modules, oil dip sticks, oil pans, oil filters, ignition parts, namely, ignition wires, ignition magnetos for engines, and points, air condensers, centrifugal fan condensers, axial fan condensers, ignition parts for internal combustion engines in the nature of condensers, intake manifolds, particulate filters for exhaust systems for internal combustion engines, compressors, engine seals, charge air coolers, fuel and air mixture regulators, fuel catalysts, pumps, fuel injectors, cylinders, and cylinder heads, motor mufflers, engine exhaust systems comprised of pipes, collector and muffler" includes various entries that are indefinite and must be amended. For example, "points" could include "contact points," "ignition parts for internal combustion engines in the nature of points," etc.

"carburetors, anti-pollution devices in motors and engines, pneumatic control mechanism for motors and engines, filters for cleaning and cooling air for engines, air filters for vehicle motors and engines, particulate air filters for exhaust systems for internal combustion engines, cooling radiators for motors and engines, silencers for motors and engines, fans for motors and engines" must be amended to clarify which original entry is being modified to include these goods, such as whether these are specific types of "generic machine parts" or otherwise.

Class 12:

"headrests" must be amended to clarify that these are "for vehicle seats."

"side mirrors" is indefinite and must be amended to specify that these are "side view mirrors."

Class 35:

The activities identified as “retail and wholesale services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. If applicant’s retail and wholesale services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail or wholesale activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring …,” “retail distributorships in the field of …,” and “retail outlets featuring ...” See TMEP §§1301.01(a)(ii), 1402.11.

"business management and administrative services" must be amend to clarify the "administrative services." It is not clear if this is "Business administration services" or a specific administrative service such as "Secretarial services" or otherwise.

Class 36:

"provision of prepaid cards and tokens of value" is indefinite and must be amended to specify the particular services, such as "issuing prepaid debit and credit cards," "issuing prepaid telephone calling cards," etc.

"financial and monetary services, namely, retail and wholesale financing services for motor vehicles, namely, financing the purchase and leasing of motor vehicles, arranging of loans for motor vehicles, and banking" is indefinite as it is not clear what the primary services are here. The wording may be adjusted to clarify that these are "financing services for retail and wholesale purchase of motor vehicles" as opposed to retail and wholesale services where you can purchase these services.

"credit card services" is indefinite and must be amended to specify the particular services such as "Credit card registration services," "Credit card authorization services," etc.

"fundraising, namely, charitable fundraising and financial sponsorship of sporting events, cultural events, cultural institutions, museums, musicians" is indefinite as it is not clear whether the applicant is sponsoring individual musicians or performances by musicians.

Class 38:

"Telecommunication services, namely, telecommunication access services and providing communication services via the internet and wireless communication networks" is indefinite and must be amended to clarify the type of communications, such as voice, email, etc.

Class 41:

"driver training" is indefinite and must be amended to clarify that these are educational services and for the specific type of training, such as "safety training" or otherwise.

"entertainment in the form of live or recorded visual and audio performances by actors, musical bands, dancers" is indefinite and must be amended to clarify the "recorded" performances as this could be understood to be a Class 38 service. Applicant may amend the entry to include the statement that the performances are "recorded for the purpose of distribution through broadcast media."

"organisation of conferences, exhibitions and competitions in the field of culture, sports, entertainment for non-business and non-commercial purposes" is indefinite and must be amended to clarify the nature of the exhibitions, such as whether they are live, online, etc.

Applicant may adopt the following wording, if accurate:

Class 7: Pumps as machines, namely, electric pumps, pneumatic pumps; air compressors and fans for motors and engines; current generators; opening and closing mechanisms for vehicle, namely, electric door openers, electric door closers; lifting and hoisting equipment, namely, lifting jacks other than hand-operated; ~~machines;~~ engines, not for land vehicles; powertrains and generic machine parts, namely, distributor rotors for vehicles, Internal combustion engines land vehicle parts in the nature of distributor caps, Internal combustion engines land vehicle parts in the nature of coils, automobile engine valve covers, engine cases for vehicles, engine bearings, cylinder heads for engines, rocker arms for motors, push rods for engines, pistons for engines, piston rings, oil coolers for engines, vehicle engine parts in the nature of crankcase breathers, vehicle engine parts in the nature of oil tank plugs and caps, connecting rods, engine parts in the nature of electronic fuel injection modules, vehicle oil dip sticks, automobile oil pans, oil filters, ignition parts, namely, ignition wires, ignition magnetos for engines, and [indicate type of points, e.g., contact, ignition parts for internal combustion engines in the nature of] points, air condensers, centrifugal fan condensers, axial fan condensers, ignition parts for internal combustion engines in the nature of condensers, automotive intake manifolds, particulate filters for exhaust systems for internal combustion engines, air compressors, automotive engine seals, vehicle engine parts in the nature of charge air coolers, fuel and air mixture regulators being parts of internal combustion engines, fuel catalysts being enhancement parts for internal combustion engines, pumps for machines, fuel injectors, cylinders for machines, and cylinder heads for engines, motor mufflers, engine exhaust systems comprised of pipes, collector and muffler; generic machine parts, namely, carburetors, anti-pollution devices in motors and engines, pneumatic control mechanism for motors and engines, filters for cleaning and cooling air for engines, air filters for vehicle motors and engines, particulate air filters for exhaust systems for internal combustion engines, cooling radiators for motors and engines, silencers for motors and engines, fans for motors and engines

Class 12: Land vehicles; structural parts for land vehicles; wheels, tyres; anti-theft devices and security alarms for vehicles, and safety devices and equipment for vehicles, namely, safety belts for vehicle seats; parts and fittings for land vehicles, namely, engines, motors, steering wheels, door sills, door handles, gear shift knobs, headrests for vehicle seats, arm rests, seats, tire valve stem caps, tire valves, license plate frames, axles, suspension struts, differentials, drive trains, fenders, windows, windshields, windshield wipers, sun visors, sun shields, dashboards, shock absorbers, clutches, side view mirrors, rearview mirrors, front dash panels, sunroofs, brakes, brake calipers, brake pedals, braking systems, transmissions, steering units, suspension systems, airbags, seat belts, roof racks, hood ornaments, automotive grills, metal parts for land vehicles, namely exterior and interior metal decorative and protective trim, tanks for fuel storage, coolant storage, oil storage, and/or water storage; vehicle powertrains, comprised of engines and motors, for land vehicles

Class 35: Advertising services; marketing and promotional services; product demonstrations and organization and conducting of product presentations; organization of trade shows and exhibitions for commercial or advertising purpose; business administration of consumer loyalty, incentive and bonus programs; provision of advertising space in periodicals, on the internet, advertising time on communication media; advertising, marketing and promotional consultancy, advisory and assistance services; providing commercial trading and consumer information services in the field of automobiles; retail and wholesale store services ~~in relation to~~ featuring motor vehicles and parts therefor; assistance in business operations, namely, business management assistance; business management and administration services; providing business management analysis, research and information services; market research

Class 36: Underwriting services, namely, insurance services, namely, issuance and administration of insurance in the field of automobiles; provision of prepaid cards and tokens of value, namely, [indicate specific services, e.g., issuing prepaid debit and credit cards, issuing prepaid telephone calling cards]; financial and monetary services, namely, ~~retail and wholesale~~ financing services for retail and wholesale purchase of motor vehicles, namely, financing the purchase and leasing of motor vehicles, arranging of loans for motor vehicles, and banking; finance services relating to loan and credit, and lease-finance services, namely, loan financing; debt recovery services and factoring agency services; financial investment, namely, providing of venture capital and development capital, namely, brokerage services for capital investments, providing venture capital, development capital, private equity and investment funding; financial transfers and transactions, and payment services, namely, investment fund transfer and transaction services; cash, cheque and money order services, namely, money order services, online cash account services; credit card services, namely, [indicate the specific services, e.g., Credit card registration services, Credit card authorization services]; online personal banking; online customer banking services for credit card, loan, finance and lease accounts; financial information, providing of financial data, advice and consultancy services; financing services and funding services, namely, fund investments in relation to private equity and investment funds; fundraising, namely, charitable fundraising and financial sponsorship of sporting events, cultural events, cultural institutions, museums, performances by musicians

Class 38: Telecommunication services, namely, telecommunication access services and providing [indicate type, e.g., voice, email] communication services via the internet and wireless communication networks; telephone communication and mobile telephone services; communication by computer terminals and providing internet access; providing internet access to view online content, websites and portals

Class 41: Publishing of magazines, books; reporting, namely editorial reporting services; education and instruction services, namely, providing classes, seminars, conferences, workshops for customers and automobile dealers regarding sale, display, repair, performance and technology of vehicles; educational services, namely, driver safety training; providing entertainment services, namely, conducting music concerts, dance events, fashion shows; entertainment in the form of live ~~or recorded~~ visual and audio performances by actors, musical bands, dancers and recorded for the purpose of distribution through broadcast media, entertainment in the nature of amusement park rides; providing sport services, namely, organizing sports competitions; organisation of conferences, [indicate type, e.g., live, online] exhibitions and competitions in the field of culture, sports, entertainment for non-business and non-commercial purposes

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).

Fo r 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.

RESPONSE

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services will be deleted from the application:

Class 7: machines; engines, not for land vehicles; powertrains and generic machine parts, namely, distributor rotors, distributor caps, coils, valve covers, engine cases, engine bearings, cylinder heads for engines, rocker arms, push rods, pistons, piston rings, oil coolers, crankcase breathers, oil tank plugs and caps, connecting rods, fuel injection modules, oil dip sticks, oil pans, oil filters, ignition parts, namely, ignition wires, ignition magnetos for engines, and points, air condensers, centrifugal fan condensers, axial fan condensers, ignition parts for internal combustion engines in the nature of condensers, intake manifolds, particulate filters for exhaust systems for internal combustion engines, compressors, engine seals, charge air coolers, fuel and air mixture regulators, fuel catalysts, pumps, fuel injectors, cylinders, and cylinder heads, motor mufflers, engine exhaust systems comprised of pipes, collector and muffler; carburetors, anti-pollution devices in motors and engines, pneumatic control mechanism for motors and engines, filters for cleaning and cooling air for engines, air filters for vehicle motors and engines, particulate air filters for exhaust systems for internal combustion engines, cooling radiators for motors and engines, silencers for motors and engines, fans for motors and engines

Class 12: headrests, side mirrors

Class 35: retail and wholesale services in relation to motor vehicles and therefor; business management and administrative services

Class 36: provision of prepaid cards and tokens of value; financial and monetary services, namely, retail and wholesale financing services for motor vehicles, namely, financing the purchase and leasing of motor vehicles, arranging of loans for motor vehicles, and banking; credit card services; fundraising, namely, charitable fundraising and financial sponsorship of sporting events, cultural events, cultural institutions, museums, musicians

Class 38: Telecommunication services, namely, telecommunication access services and providing communication services via the internet and wireless communication networks

Class 41: driver training; entertainment in the form of live or recorded visual and audio performances by actors, musical bands, dancers, organisation of conferences, exhibitions and competitions in the field of culture, sports, entertainment for non-business and non-commercial purposes

The application will then proceed with the following goods and/or services only:

Class 12: Land vehicles; structural parts for land vehicles; wheels, tyres; anti-theft devices and security alarms for vehicles, and safety devices and equipment for vehicles, namely, safety belts for vehicle seats; parts and fittings for land vehicles, namely, engines, motors, steering wheels, door sills, door handles, gear shift knobs, arm rests, seats, tire valve stem caps, tire valves, license plate frames, axles, suspension struts, differentials, drive trains, fenders, windows, windshields, windshield wipers, sun visors, sun shields, dashboards, shock absorbers, clutches, , rearview mirrors, front dash panels, sunroofs, brakes, brake calipers, brake pedals, braking systems, transmissions, steering units, suspension systems, airbags, seat belts, roof racks, hood ornaments, automotive grills, metal parts for land vehicles, namely exterior and interior metal decorative and protective trim, tanks for fuel storage, coolant storage, oil storage, and/or water storage; vehicle powertrains, comprised of engines and motors, for land vehicles

Class 35: Advertising services; marketing and promotional services; product demonstrations and organization and conducting of product presentations; organization of trade shows and exhibitions for commercial or advertising purpose; business administration of consumer loyalty, incentive and bonus programs; provision of advertising space in periodicals, on the internet, advertising time on communication media; advertising, marketing and promotional consultancy, advisory and assistance services; providing commercial trading and consumer information services in the field of automobiles; assistance in business operations, namely, business management assistance; providing business management analysis, research and information services; market research

Class 36: Underwriting services, namely, insurance services, namely, issuance and administration of insurance in the field of automobiles; finance services relating to loan and credit, and lease-finance services, namely, loan financing; debt recovery services and factoring agency services; financial investment, namely, providing of venture capital and development capital, namely, brokerage services for capital investments, providing venture capital, development capital, private equity and investment funding; financial transfers and transactions, and payment services, namely, investment fund transfer and transaction services; cash, cheque and money order services, namely, money order services, online cash account services; online personal banking; online customer banking services for credit card, loan, finance and lease accounts; financial information, providing of financial data, advice and consultancy services; financing services and funding services, namely, fund investments in relation to private equity and investment funds

Class 38: telephone communication and mobile telephone services; communication by computer terminals and providing internet access; providing internet access to view online content, websites and portals

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

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.

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

Hartnett, Megan K.

/Megan Hartnett/

Examining Attorney

Trademark Law Office 123

(571) 270-1977

megan.hartnett@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.