Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL 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 full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE RECORDS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

SUMMARY OF ISSUES:

Requirement – Amendment of Mark Description
Requirement – Amendment of Identification of Services and
Requirement – English Translation of “MAMMUT”

AMENDMENT OF MARK DESCRIPTION

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. Specifically, the mammoth design appears to contain white outlines and features that must be included.

Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:

The mark consists of a stylized design of a mammoth in blue, outlined in white with white tusks that are outlined in blue. To the right is the word “MAMMUT” in a blue stylized font with two chevrons above, the bottom smaller chevron in blue and the top larger chevron in red, all on a white background.

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because the wording, “transport of natural gas” and “transportation of crude oil” must indicate the means of transportation and the wording, “transport”, must indicate the type of services being provided, such as “transport of {specify goods} by {indicate specific means, e.g. truck, train, air}”. Additionally, the wording, “packaging and storage of goods” and “vehicle parking and storage” must be clarified as to the type of services being offered, such as “Transport, delivery, packaging and storage of goods” and “vehicle parking and storage in the nature of provision of car parking facilities”. Further, the wording, “mooring of boats and ships” must be clarified as to the nature of the services, such as “Providing vessel mooring facilities” and the wording, “loaning, rental and leasing of articles in connection with the provision of the aforementioned services” must be clarified as to the type of articles being loaned, rented and leased such as “Rental of packing machines” or “Cargo container rental services”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Further, the identification contains the wording “included in this class”, which is indefinite as wording such as "included in this class" is not the common name of particular goods or services and would not be understood by those unfamiliar with the Nice Classification. See, TMEP §1402.01. Therefore, Applicant must delete this wording as indicated below.

Additionally, the identification of services contains brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate services that have been deleted from registrations or in an affidavit of incontestability to indicate services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the services.

Applicant may adopt the following identification, if accurate:

Class 039: Consultancy services relating to the distribution of electricity; distribution and transmission of electricity; distribution of electricity to households; distribution of energy; distribution of energy for heating and cooling buildings; distribution of gas; distribution of heat in the nature of heat supplying; electricity distribution; gas supplying [distribution]; heat supplying [distribution]; information and advisory services in relation to the distribution of energy; leasing the use of power lines to third parties for the transmission of electricity; marine transport of liquefied natural gas; providing information relating to the distribution of electricity; providing information relating to water supplying services; public utility services in the nature of electricity distribution; supply of electricity; transmission of oil or gas through pipelines; transport and distribution of natural gas and liquefied gas; transport by pipeline; transport of fuels by pipeline; transport of liquefied natural gas by sea; transport of natural gas by {indicate specific means, e.g. truck, train, air}; transportation of crude oil by {indicate specific means, e.g. truck, train, air}; transportation of oil by pipeline; transportation and storage of waste; water distribution; water distribution and supply; water supply; water supplying; transport of {specify goods} by {indicate specific means, e.g. truck, train, air}; Transport, delivery, packaging and storage of goods; vehicle parking and storage in the nature of provision of car parking facilities; Providing vessel mooring facilities, namely, mooring of boats and ships; loaning, rental and leasing of articles in connection with the provision of the aforementioned services, namely, {Specify type of articles by common commercial name in International Class 039, e.g. Rental of parking spaces, Rental of packaging equipment, Rental of packing machines, Cargo container rental services, Crane rental and leasing for loading and unloading purposes} included in this class; advisory and information services relating to the aforementioned services included in this class

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b).

The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. 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 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 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.

ENGLISH TRANSLATION REQUIRED

Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809. In the present case, the wording “MAMMUT” requires translation.

The following translation statement is suggested:

The English translation of the word “MAMMUT” in the mark is “MAMMOTH”.

TMEP §809.03. See attached translation evidence.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other 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. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

If the Applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned Examining Attorney.

/Jennifer O'Brien/

Examining Attorney

Law Office 120

(571)272-4579

Jennifer.O'Brien@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.

Offc Action Outgoing

MAMMUT

Ferdows, Behzad Daniel

Offc Action Outgoing

Offc Action Outgoing [image/jpeg]