UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79240585
MARK: VOLKSWAGEN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Volkswagen Aktiengesellschaft
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1422500
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 in the application: the three instances of the wording “included in class 18”; skins and fur; whips and apparel for animals; electronic pet collars; as well as bracketed wording, in the International Class 18 identification of goods; and racks; included in class 20; and keys; fasteners; compartments for furniture; plugs [dowels]; protectors and support devices for furniture; stair rods, non-electric door springs; trays, not of metal; included in class 20; bamboo; animal housing; containers, not of metal [storage, transport]; ladders and movable steps; containers, not of metal [storage, transport]; figurines [statuettes] of wood, wax, plaster or plastic; hand-held mirrors [toilet mirrors]; [decoration]; [furniture]; dog baskets; cat baskets; sleeping baskets, non-metallic, for domestic animals, in International Class 20 See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
IDENTIFICATIONS REQUIRES AMENDMENT
The International Class 24 identification of goods is acceptable as written. The remaining identifications of goods are unacceptable because certain goods are indefinitely worded. See TMEP §§1402.01, 1402.03(a).
Please note that although an identification may include such wording as “included in this class,” referencing the actual International Class number in the identifications should be avoided [e.g., “in Class 18”] because the classification of goods/services may be subject to change. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
Additionally, the identification of goods 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 goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or 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 goods and/or services OR delete such wording if unnecessary.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may change the wording to the following, if accurate [please note that the current unacceptable entries appear italicized, and suggested wording the applicant must provide appears in bold]:
Class 18: Umbrellas and parasols; walking sticks; trunks and travelling bags, suitcases; bags included in this class, in particular sports bags and briefcases; wallets, purses; key cases; goods made from leather and imitations of leather, included in this class, namely, umbrellas and parasols, trunks and travelling bags, suitcases, bags, wallets, purses, key cases, handbags, travelling bags, rucksacks; leather, unworked or semi-worked; handbags; travelling bags; rucksacks; imitation leather; raw skins and fur pelts; animal skins; saddlery, whips and apparel for animals in the nature of clothing for animals; travel garment covers; school backpacks; leashes for animals; costumes for animals; covers for animals; collars for animals; animal carriers; blankets for animals; harness for animals; covers and wraps for animals; dog shoes; dog clothing; dog parkas; pet hair bows; electronic pet collars for use in restraining pets and not for use in training; collars for pets bearing medical information; parts and fittings of all aforesaid goods, included in this class.
Class 20: Furniture and furniture fittings, not of metal; mirrors, picture frames, beds; racks, namely, [specify the type/nature of Class 20 racks, e.g. hat racks and storage racks]; cupboards; desks, seats, armchairs, sofas, high chairs for babies and infant walkers, coat hangers, bolsters; goods included in this class 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, mooring buoys, non-metallic, locks with keys sold as a unit, door, gate and window fittings, valves for containers, fasteners in the nature of [indicate specific type/nature of Class 20 fasteners, e.g., bolts, nails, rivets, screws], door clappers, cable clips, connecting parts for furniture, compartments for furniture in the nature of [indicate specific type/nature of Class 20 fasteners, e.g., bolts, nails, rivets, screws], flaps hinges, grab bars, hooks, identification bracelets, moldings for picture frames, plugs in the nature of dowels, protectors for furniture in the nature of [insert specific type/nature of Class 20 protectors, e.g. fitted furniture leg covers for floor protection purposes] and support devices for furniture in the nature of [insert specific type/nature of Class 20 devices, e.g. carpet coasters for protecting furniture legs], split rings for keys, poles, saw horses, sink mats, hardware in the nature of stair rods, hardware in the nature of non-electric door springs, staves, suction cup hooks, tent pegs, and trays not of metal in the nature of [insert specific type/nature of Class 20 trays, e.g. plastic trays for foodstuff packaging]; casks, not of metal, packaging containers of plastic, containers, not of metal, for liquid fuel, inflatable publicity objects included in this class; chests, not of metal; ladders of wood or plastics; raw or semi-worked bamboo; works of art, of wood, wax, plaster or plastic; display boards; decorations of plastic for foodstuff; animal housing in the nature of [insert specific type/nature of Class 20 housing, e.g. nesting boxes] and beds; identification bracelets, not of metal, for hospitals; coffins and funerary urns; coat hooks; curtain rings; statues, figurines, works of art and ornaments and decorations, included in this class, namely, [insert specific type/nature of Class 20 statues, figurines, works of art and decorations, e.g. statues, figurines and works of art made of plaster, plastic, wax and wood and inflatable figures for use as outdoor holiday decorations]; unprocessed and semi-processed materials included in the class, not specified for use, namely, amber, meerschaum; containers, not of metal for use in transportation and storage for commercial or industrial use; closures, not of metal, for containers; non-metal ladders and movable steps; display stands and signboards of wood or plastics; bed frames; flower-pot pedestals; letter boxes, non-metallic; boxes of wood or plastic; figurines in the nature of statuettes of wood, wax, plaster or plastic; coat hooks, not of metal; coatstands; toilet mirrors being hand-held mirrors; infant walkers; cushions; paper blinds; screens; umbrella stands; keyboards for hanging keys; inflatable publicity objects; wind chimes; magazine racks; newspaper display stands; dog baskets in the nature of dog beds; dog kennels; portable kennels; cat baskets in the nature of dog beds; cat beds; scratching posts for cats; identification tags of plastic for animals; pet cushions; kennels for household pets; beds for household pets; inflatable pet beds; portable beds for pets; sleeping baskets, non-metallic, for domestic animals all in the nature of beds for household pets; baskets, non-metallic, for the transportation of domestic animals; parts and fittings of all aforesaid goods, included in this class.
TMEP §1402.01.
PLEASE NOTE: An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
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.
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 in International Classes 18 and 20 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 goods in International Classes 18, 20 and 24: Umbrellas and parasols; walking sticks; trunks and travelling bags, suitcases; bags, in particular sports bags and briefcases; wallets, purses; key cases; goods made from leather and imitations of leather, namely, umbrellas and parasols, trunks and travelling bags, suitcases, bags, wallets, purses, key cases, handbags, travelling bags, rucksacks; leather, unworked or semi-worked; handbags; travelling bags; rucksacks; imitation leather; animal skins; saddlery; travel garment covers; school backpacks; leashes for animals; costumes for animals; covers for animals; collars for animals; animal carriers; blankets for animals; harness for animals; covers and wraps for animals; dog shoes; dog clothing; dog parkas; pet hair bows; collars for pets bearing medical information; parts and fittings of all aforesaid goods, included in this class, in International Class 18; Furniture and furniture fittings, not of metal; mirrors, picture frames, beds; cupboards; desks, seats, armchairs, sofas, high chairs for babies and infant walkers, coat hangers, bolsters; goods 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, mooring buoys, non-metallic, locks, door, gate and window fittings, valves for containers, door clappers, cable clips, connecting parts for furniture, flaps hinges, grab bars, hooks, identification bracelets, moldings for picture frames, split rings for keys, poles, saw horses, sink mats, staves, suction cup hooks, tent pegs; casks, not of metal, packaging containers of plastic, containers, not of metal, for liquid fuel, inflatable publicity objects; chests, not of metal; ladders of wood or plastics; works of art, of wood, wax, plaster or plastic; display boards; decorations of plastic for foodstuff; animal beds; identification bracelets, not of metal, for hospitals; coffins and funerary urns; coat hooks; curtain rings; statues, figurines, works of art and ornaments and decorations, included in this class; unprocessed and semi-processed materials included in the class, not specified for use, namely, amber, meerschaum; closures, not of metal, for containers; display stands and signboards of wood or plastics; bed frames; flower-pot pedestals; letter boxes, non-metallic; boxes of wood or plastic; coat hooks, not of metal; coatstands; infant walkers; cushions; paper blinds; screens; umbrella stands; keyboards for hanging keys; inflatable publicity objects; wind chimes; magazine racks; newspaper display stands; dog kennels; portable kennels; cat beds; scratching posts for cats; identification tags of plastic for animals; pet cushions; kennels for household pets; beds for household pets; inflatable pet beds; portable beds for pets; baskets, non-metallic, for the transportation of domestic animals; parts and fittings of all aforesaid goods, included in this class, in International Class 20; and Sleeping bags for camping, in International Class 24. 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 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.
/Ronald L. Fairbanks/
Ronald L. Fairbanks
Trademark Examining Attorney
Law Office 119
(571) 272-9405
ron.fairbanks@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.