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. 79242139
MARK: CYBER
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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: PIRELLI TYRE S.p.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1426152
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.
In response to this Office action, the applicant must address the following issues:
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
The stated refusal refers to the following goods and services listed below and does not bar registration for the other goods and services.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2159986, 4925476, 4000603, 5548171, 5548170, and 2904348. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
In this case, applicant has applied to register the mark CYBER for use in connection with Class 09 – “measuring, detecting and monitoring instruments, indicators and controllers; sensors” and Class 12 – “Vehicles and parts and fittings for vehicles; apparatus for vehicles and tires” and Class 37 – “Maintenance and repair services for vehicles and their component parts and accessories; installation, maintenance repair and replacement services for vehicle equipment, instruments and electric and electronic devices; information and advice services for drivers and vehicle fleet managers related to vehicle maintenance and repair; installation, maintenance, replacement and repair services for vehicle equipment, instruments and electric and electronic devices” and Class 39 – “Delivery of equipment, instruments and electric and electronic devices for vehicles and their component parts, and of tires and/or vehicle wheels; vehicle transport; conveyance of persons, goods and motor vehicles; delivery of pneumatic tyres and/or wheels for vehicles, storage of pneumatic tyres and/or wheels for vehicles; towing in the event of vehicle breakdown, repatriation, by all means, of people and/or vehicles in the event of breakdown.”
Registration No. 2159986 is for the mark CYBER used in connection with, in relevant part, “controlling and regulating devices for transmission gears and for electromotors, namely, electronic measuring and control circuits with sensors for measuring the path, speed, temperature and power of a gear or motor.”
Registration No. 4925476 is for the mark CYBER used in connection with, in relevant part, “Bearings, namely, wheel bearings for land vehicles.”
Registration No. 4000603 is for the mark CYBERMOTION used in connection with, in relevant part, “Electrical controlling devices for controlling machines and machine tools for use in cranes, and lifting and elevating apparatus; electrical controlling devices for cranes; * all of the aforementioned goods only in relation to systems and components in accordance with EN61508 safety level SIL-3 with integrated automation and/or variable speed” and “Land vehicles”
Registration No. 5548171 is for the mark CYBERKAR in stylized letters and Registration No. 5548170 is for the mark CYBERKAR in standard characters. Both are used in connection with, in relevant part, “maintenance of computer hardware for emergency vehicles.”
Registration No. 2904348 is for the mark CYBERTRAX used in connection with, in relevant part, “Transportation Of Goods, Cargo Handling And Freight Services All Via Truck, Train, Boat And Air.”
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrants. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is CYBER and the marks in Registration Nos. 2159986 and 4925476 are CYBER. Thus, the word portion of the marks is identical in terms of appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because the word portion is identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id. Therefore, the marks are confusingly similar.
Also in this case, applicant’s mark CYBER is similar to the mark CYBERMOTION, CYBERKAR and CYBERTRAX as the applied-for mark is entirely encompassed in the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Therefore, the marks are similar for likelihood of confusion purposes.
Further, the addition of a design to the applied-for mark and stylization of the letters in Registration No. 5548171 does not obviate the similarities between the marks. When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and services because it is that portion of the mark that consumers use when referring to or requesting the goods and services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Here, the dominant portion of the applied-for and registered marks are the wording, which are identical or identical in part. Therefore, the marks are similar for likelihood of confusion purposes.
Ultimately, when purchasers call for the goods and services of the applicant and registrant using CYBER and CYBER, CYBERMOTION, CYBERKAR, CYBERTRAX they are likely to be confused as to the sources of those goods and services by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods and Services
In this case, applicant's “measuring, detecting and monitoring instruments, indicators and controllers; sensors” are related to the goods in Registration No. 2159986, “controlling and regulating devices for transmission gears and for electromotors, namely, electronic measuring and control circuits with sensors for measuring the path, speed, temperature and power of a gear or motor” and Registration No. 4000603, “Electrical controlling devices for controlling machines and machine tools for use in cranes, and lifting and elevating apparatus; electrical controlling devices for cranes; * all of the aforementioned goods only in relation to systems and components in accordance with EN61508 safety level SIL-3 with integrated automation and/or variable speed.” Specifically, both the application and registration identify controlling, measuring and sensor devices.
The application uses broad wording to describe controlling, measuring and sensor devices, which presumably encompasses all goods of the type described, including registrant’s more narrow controlling and regulating devices for transmission gears and for electromotors and electrical controlling devices for cranes. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Also in this case, applicant’s “Vehicles and parts and fittings for vehicles; apparatus for vehicles and tires” are related to the goods in Registration No. 4925476, “Bearings, namely, wheel bearings for land vehicles” and the goods in Registration No. 4000603, “land vehicles”. The application uses broad wording to describe vehicles and parts for vehicles, which presumably encompasses all goods of the type described, including registrants’ more narrow bearings and land vehicles. Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”
Further in this case, applicant’s “Maintenance and repair services for vehicles and their component parts and accessories; installation, maintenance repair and replacement services for vehicle equipment, instruments and electric and electronic devices; information and advice services for drivers and vehicle fleet managers related to vehicle maintenance and repair; installation, maintenance, replacement and repair services for vehicle equipment, instruments and electric and electronic devices” are related to the services in Registration Nos. 5548171 and 5548170, “maintenance of computer hardware for emergency vehicles.” The application uses broad wording to describe maintenance for vehicle parts and related electronics, which presumably encompasses all services of the type described, including registrants’ more narrow maintenance for emergency vehicle computer hardware. Additionally, the services of the applicant have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”
Finally, in this case, applicant’s “Delivery of equipment, instruments and electric and electronic devices for vehicles and their component parts, and of tires and/or vehicle wheels; vehicle transport; conveyance of persons, goods and motor vehicles; delivery of pneumatic tyres and/or wheels for vehicles, storage of pneumatic tyres and/or wheels for vehicles; towing in the event of vehicle breakdown, repatriation, by all means, of people and/or vehicles in the event of breakdown” is related to the services in Registration No. 2904348, “Transportation Of Goods, Cargo Handling And Freight Services All Via Truck, Train, Boat And Air.” The registrant uses broad wording to describe transportation services for goods, which presumably encompasses all services of the type described, including applicant’s more narrow transportation services for vehicles and related goods. Additionally, the services of the applicant and registrant have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”
When purchasers encounter the goods and services of the applicant and registrant, they are likely to be confused as to the source of the goods and services by the relationship between them. Thus, the goods and services are closely related.
Therefore, because the marks are confusingly similar and the goods and services are closely related, purchasers encountering these goods and services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
(1) Deleting the goods and services to which the refusal pertains;
(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
DISCLAIMER REQUIRED
The attached evidence from the Oxford Dictionary shows this wording means “Relating to or characteristic of the culture of computers, information technology, and virtual reality.” Therefore, the wording merely describes that applicant’s goods and services are related to computers and information technology.
Further, the wording is commonly used by third parties to describe similar goods and services that are related to computers and information technology. See attached websites for TIRE BUSINESS article “PIRELLI expects “cyber car’ technology to debut in 2018, http://www.tirebusiness.com/article/20180308/NEWS/180309953/pirelli-expects-cyber-car-technology-to-debut-in-2018; ISACA article “Boosting Cyber Security With Data Governance and Enterprise Data Management,” http://m.isaca.org/Journal/archives/2017/Volume-3/Pages/boosting-cyber-security-with-data-governance-and-enterprise-data-management.aspx; and ALLIANZ article “Cyber risk on the rise in shipping,” http://www.agcs.allianz.com/insights/expert-risk-articles/cyber-risk-on-the-rise-in-shipping/. Therefore, consumers are conditioned to view the term “CYBER” as describing that the goods are used with and services use of computers and information technology.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “CYBER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
INCOMPLETE MARK DESCRIPTION – AMENDMENT REQUIRED
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the graphic representation of a tire section with a wide band forming the letter “C” and containing a series of curved lines within the wide band; the graphic representation is the left of the letters “YBER”.
INDEFINITE AND OVERLY BROAD IDENTIFICATION OF GOODS SERVICES/GOODS AND SERVICES – AMENDMENT REQUIRED
Class 09
In addition, “electronic monitoring instruments, other than for medical use, including point-to-point communications equipment” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a). Further, the term “point-to-point communications equipment” is indefinite as it could refer to a wide variety of communications equipment, such as transmitters of electronic signals or radio transmitters and receivers. Therefore, applicant must specify the goods for classification purposes.
Further, “network communication apparatus; wireless communication apparatus” is indefinite and must be clarified as the wording identifies a wide range of communication goods. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a). Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9 (i.e., International Classes 41 and 42), any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Additionally, “navigation, guidance, tracking, targeting and map making devices”; and “safety, security, protection and signaling devices are indefinite and must be clarified because the wording can refer to a wide range of devices used for the identified purposes. Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
Further, “measuring, detecting and monitoring instruments, indicators and controllers” in the identification of services in International Class 09 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods 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). For example, Access control and alarm monitoring systems, Lasers for measuring purposes, Infrared detection apparatus are in International Class 09 and Pulse measuring devices, biosensors for detecting infectious diseases and patient monitoring sensors and alarms are in International Class 10.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 may be classified in several international classes, any modification to this wording must identify goods in International Class 09 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii). Accordingly, applicant must specify the goods within Class 09 for classification purposes.
Moreover, “sensors” in the identification of goods is indefinite and must be clarified because the wording can refer to a wide range of sensors used for various purposes. Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
Finally, “tire monitoring apparatus” is indefinite and must be clarified as the wording identifies a wide range of tire monitoring goods. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “apparatus,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
Class 12
The wording “Vehicles and parts and fittings for vehicles” in the identification of goods is indefinite and must be clarified because the word “vehicles” can refer to a wide range of vehicles, such as land, water, rail bound vehicles, etc. Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
Further, “parts and fittings for vehicles” in the identification of services in International Class 12 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods 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). For example, carburetors, intake manifolds, and engine cases as parts of vehicles are in International Class 07 and suspension struts, transaxles, steering wheels, and fenders, etc. are in International Class 12. As discussed above, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 12 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii). Accordingly, applicant must specify the goods within Class 12 for classification purposes.
In addition, “apparatus for vehicles and tires” in the identification of services in International Class 12 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods 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). For example, tire pressure gauges are in International Class 09 and tire pumps, anti-skid chains for vehicle tires, vehicle wheel hub assemblies are in International Class 12. As discussed above, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 12 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii). Accordingly, applicant must specify the goods within Class 12 for classification purposes.
Moreover, “treads for vehicles” in the identification of goods is indefinite and must be clarified because the wording can refer to a wide range of treads. Therefore, applicant must specify the goods to allow the Office to conduct proper likelihood of confusion analyses.
Furthermore, “pneumatic, semi pneumatic and/or solid tires” includes the term “and/or” in the identification of goods. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether the applicant is using the mark on all the identified goods.
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Class 35
The wording “Retail services or wholesale services for tires” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail and wholesale 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 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 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 tires,” “retail distributorships in the field of tires,” and “retail outlets featuring tires.” See TMEP §§1301.01(a)(ii), 1402.11.
Applicant must amend the identification to specify the nature of the wholesale activity that applicant provides (e.g., wholesale distributorships, wholesale services by direct solicitation by sales agents, or wholesale store services). If the services are in the nature of wholesale stores, direct solicitation, or distributorships, the identification should also indicate the field or type of goods offered through the wholesale services, e.g., “wholesale distributorships featuring tires,” “wholesale services by direct solicitation by sales agents in the field of tires,” and “wholesale store services featuring tires.” See TMEP §§1301.01(a)(ii), 1402.11. Therefore, applicant must specify the services to allow the Office to conduct proper likelihood of confusion analyses.
Further, “commercial services, associated with the tires management, consisting in facilitating and organizing the maintenance, repair of tires, vehicle breakdown assistance, tracking and monitoring vehicles for commercial purposes” in the identification of goods is indefinite and must be clarified because it does not identify a known services, such as business management or logistic services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Therefore, applicant must clarify the nature of the services.
In addition, “business consultation services relating to the management of a tires for commercial purposes” in the identification of goods is indefinite and must be clarified because it does not clearly identify what is being managed as “a tire” generally does not require management. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant must clarify the nature of the services.
Moreover, “providing information, consultancy and advice in the field of tyres and vehicle” in the identification of services in International Class 35 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class. For example, business-related services in the field of tyres and vehicles are in Class 35, and information or consulting in the field of maintenance for tyres and vehicles is in International Class 37. As discussed above, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 35 only, the class specified in the application for these goods. Accordingly, applicant must specify the goods within Class 35 for classification purposes.
Class 37
The wording “services relating to the inspection of cars, namely, checking the technical state of tires” is indefinite and must be clarified because it does not appear to describe any goods services in the identified international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of services. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 37 is indefinite and does not appear to describe any services in that class 37 as motor vehicle inspections are in Class 42. See TMEP §1904.02(c)(iii).
Applicant may respond by amending this wording to clarify the nature of the services; however, any amendment to the identification must identify services in International Class 37 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 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 to services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
Class 39
In addition, “storage services” in the identification of services in International Class 39 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class. For example, Electronic data storage are in International Class 32 and warehouse or physical storage is in International Class 39. As discussed above, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 39 only, the class specified in the application for these goods. Accordingly, applicant must specify the goods within Class 39 for classification purposes.
Further, ‘conveyance of persons, goods and motor vehicles” in the identification of goods is indefinite and must be clarified because it does not use known terminology, such as “transport”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Therefore, applicant must clarify the nature of the services.
Moreover, “vehicle rental (including car sharing and courtesy car)” contains parentheses. As discussed above, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods. Also as discussed above, “including” is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” Therefore, applicant must specify the services with definite wording.
Furthermore, “delivery of pneumatic tyres and/or wheels for vehicles, storage of pneumatic tyres and/or wheels for vehicles” includes the term “and/or” in the identification of services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services; (2) the nature of the services is unclear; or (3) classification cannot be determined from such wording. In this case, it is unclear whether the applicant is using the mark for services in connection with all the identified goods. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Additionally, “repatriation, by all means, of people and/or vehicles in the event of breakdown” in the identification of services is indefinite and must be clarified because “repatriation” does not identify a known services such as transportation. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Finally, “repatriation, by all means, of people and/or vehicles in the event of breakdown” includes the term “and/or”. As discussed above applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may adopt the following identification, if accurate:
Class 09 – “Data transfer units, namely, [applicant to specify, e.g. blank USB flash drives]; electronic monitoring instruments, other than for medical use, namely, point-to-point communications equipment in the nature of [applicant to specify, e.g. transmitters of electronic signals, radio transmitters and receivers]; network communication apparatus, namely, [applicant to specify, e.g. computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks, telecommunications and data networking hardware in the nature of devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols]; wireless communication apparatus, namely, [applicant to specify, e.g. Wireless communication devices for transmitting images taken by a camera, Amplifiers for wireless communications, Wireless communication devices for voice, data or image transmission]; recorded computer software for [applicant to specify, e.g. connecting computer network users, connecting global computer networks, data transmission]; downloadable applications for use with mobile devices to [applicant to specify, e.g. connect computer network users, connect global computer networks, transmit data]; software and applications for mobile devices to [applicant to specify, e.g. connect computer network users, connect global computer networks, transmit data]; downloadable computer software for remote monitoring and analysis; software for data transmission; applications for smartphones for measuring data of vehicle running motion; computer programs for measuring data of vehicle running motion; navigation, guidance, tracking, targeting and map making devices, namely, [applicant to specify, e.g. GPS navigation device, Global positioning system (GPS), GPS tracking devices, GPS data logger for recording trips]; safety, security, protection and signaling devices, namely, [applicant to specify, e.g. Security control panels and motion detectors, Security alarm controllers, sensors and detector units for use in controlling the actuation and operation of automotive safety apparatus and equipment]; measuring, detecting and monitoring instruments, indicators and controllers, namely, [applicant to specify, e.g. Access control and alarm monitoring systems, Lasers for measuring purposes, Infrared detection apparatus]; [applicant to specify, e.g. pressure, electronic proximity, alarm] sensors; tire monitoring apparatus, namely, [applicant to specify, e.g. tire-pressure measurers, automatic indicators of low pressure in tires, electronic tire pressure monitors for vehicle safety]; tire pressure sensors; tire pressure gauge.”
Class 12 – “[applicant to specify, e.g. land, air, water, railbound] vehicles and parts and fittings for vehicles, namely, [applicant to specify, e.g. suspension struts, transaxles, steering wheels, land vehicle fenders]; apparatus for vehicles and tires, namely, [applicant to specify, e.g. tire pumps, anti-skid chains for vehicle tires, vehicle wheel hub assemblies]; treads for vehicles, namely, [applicant to specify, e.g. Treads for retreading tires, Treads for retreading tires for vehicles used in the civil engineering industry]; tires, solid, for vehicle wheels; pneumatic, semi-pneumatic and solid tires; vehicle wheels; wheel rims; inner tubes and mousse for vehicle tires.”
Class 35 – “Retail [applicant to specify, e.g. store, outlet] services or wholesale [applicant to specify, e.g. store, distributorship] services for tires; business information services in the field of tires; commercial [applicant to specify, e.g. business management] services, associated with the tires management, consisting in facilitating and organizing the maintenance, repair of tires, vehicle breakdown assistance for [applicant to specify, e.g. business vehicles] and tracking and monitoring vehicles for commercial purposes; business consultation services relating to the management of a tire shop for commercial purposes; database management services; inventory management services; compilation of data in computer databases; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; computerized file management, services for capturing, processing, collecting and organizing data in a central file; computerised business information services; providing [applicant to specify, e.g. business] information, [applicant to specify, e.g. business management] consultancy and [applicant to specify, e.g. business management] advice in the field of tyres and vehicle.”
Class 37 – “Maintenance and repair services for vehicles and their component parts and accessories; maintenance, repair, retreading and replacement services for vehicle tires; installation, maintenance, repair and replacement services for vehicle equipment, instruments and electric and electronic devices; information and advice services for drivers and vehicle fleet managers related to vehicle maintenance and repair; retreading of tires; vulcanizing of vehicle tires; tire rotating and balancing; installation, maintenance, replacement and repair services for vehicle equipment, instruments and electric and electronic devices.”
Class 39 – “Delivery of equipment, instruments and electric and electronic devices for vehicles and their component parts, and of tires and/or vehicle wheels; storage of equipment, instruments and electric and electronic devices for vehicles and their component parts, and of tires and/or vehicle wheels; information and advice services for drivers and vehicle fleet managers related to vehicle geolocation and routes; transport services for passengers; vehicle transport, namely, [applicant to specify, e.g. transport of land vehicles by truck, transportation services by road]; storage services for [applicant to specify, e.g. tires, land vehicles, land vehicle parts]; conveyance in the nature of transport of persons, goods and motor vehicles; vehicle rental, namely, car sharing and rental of courtesy cars; chauffeur services; car parking services, parking place rental and procurement of parking places for motor vehicles; carpooling services, namely, [applicant to specify, e.g. matching drivers of motor vehicles with individuals needing rides]; delivery of pneumatic tyres and wheels for vehicles, storage of pneumatic tyres and wheels for vehicles; towing in the event of vehicle breakdown, repatriation in the nature of [applicant to specify, e.g. providing transportation to their origin point], by all means, of people and vehicles in the event of breakdown; providing information relating to vehicle driving services.”
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.
RESPONSE TO THIS OFFICE ACTION
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@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.