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. 79253252
MARK: FERRARI 488 PISTA
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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: FERRARI 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. 1453082
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.
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).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
In this case, applicant must disclaim the wording “PISTA” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
According to the application the term PISTA translates in to English at “race track.” This English translation immediately identifies a key characteristic and intended use of the goods, namely to be used on a race track. For class 28, the examining attorney believes that the term retains its descriptive qualities because the toys may or do include toy race tracks and cars intended for toy race tracks.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PISTA” for Classes 12 and 28 apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; 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, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).
IDENTIFICATION OF GOODS
As identified below, some of the wording in the identification of goods must be clarified to identify the common commercial name of the product associated with the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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).
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services. In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Applicant must address the following issues and may adopt the suggested language, if accurate:
Please note that the suggested language is underlined.
International Class 9 – Eyeglasses; sunglasses; anti-glare glasses; goggles for sports; swimming goggles; eyeglass and sunglass cases; eyeglass and sunglass lenses; eyeglass and sunglass frames; eyeglass and sunglass chains; eyeglass and sunglass cords; contact lenses; magnifying glasses, being optics; cases adapted for contact lenses; 3D spectacles; smartglasses; binocular cases; recorded computer and electronic programs for hand-held games with liquid crystal displays; electronic downloadable game software for handheld electronic devices; electronic downloadable game software for cellular phones; downloadable computer game software; recorded computer and electronic programs for electronic games; computer games cartridges for use with electronic game apparatus; computer game cartridges; video game cartridges; computer game equipment, namely, disks for electronic video and computer games; video game discs; computer game cassettes; video game cassettes; joysticks for use with computers, other than for video games; joystick battery chargers; memory cards for video game machines; computer or electric mouse for video game machines; simulators for the steering and control of vehicles; electronic sports training simulators; steering wheels for computers for use with simulators for the steering and control of vehicles; earphones used for connecting to hand-held games; virtual reality headsets and helmets adapted for use in playing video games and video game consoles; bags and cases adapted or shaped to contain computers; bags adapted for laptops; sleeves for laptops; protective covers and cases for tablet computers; mouse pads; mobile telephones; mobile phone covers; mobile phone holders; bags and cases adapted or shaped to contain mobile phones; cell phone straps; battery chargers for cellular phones; cell phone battery chargers for use in vehicles; smartphones; covers for smartphones; smartphone holders; bags and cases adapted or shaped to contain smartphones; smartphone straps; battery chargers for smartphones; smartphone battery chargers for use in vehicles; smartwatches; wearable digital electronic devices in the nature of smartwatches for the sensing, recording, storing, sending and receiving of text, data, audio, image and video files across communications networks, including devices that communicate with smartphones, computers, computer peripheral devices, personal digital assistants, sound recording and sound reproducing apparatus, and internet sites; downloadable computer software and electronic apparatus namely smartwatches and activity trackers related to the foregoing, namely, for monitoring, processing, displaying, storing and transmitting data relating to a user's physical activity, compliance with health and fitness programs, geolocation, direction, distance, altitude, speed, steps taken, activity level, calories burned, navigational information, weather information and biometric data, and downloadable computer software for accessing and searching databases related to any of the foregoing; battery chargers for smartwatches; battery chargers for smartwatches for use in vehicles; mice, being computer peripheral devices; wrist rests for use with computers; personal computers; laptop computers; downloadable computer software for downloading and organizing music files and games; cases for laptops; laptop carrying cases; holders especially adapted for ear plugs for divers; protective helmets; fireproof automobile racing suits for safety purposes; face-shields for protection against accidents, irradiation and fire; gloves for protection against accidents; balaclavas for protection against accidents, irradiation and fire; shoes for protection against accidents, irradiation and fire; boots for protection against accidents, irradiation and fire; protection devices for personal use against accidents, namely, gloves, masks, nets and safety harness; garments for protection against accidents, irradiation and fire; garments for protection against fire; CD-ROMs featuring car races and the history of automobile manufacturers; DVDs featuring car races and the history of automobile manufacturers, CD-ROMs featuring high-performance cars and automobiles; DVDs featuring high-performance cars and automobiles; downloadable image files containing artwork, texts, audio, videos, games, internet web links and photographs relating to sporting and cultural activities, and automobiles; downloadable video recordings containing music and featuring car racing and competitions, the history of automobile manufacturers, and on the subject of automobiles; downloadable electronic publications in the nature of magazines, books, newspapers, maps, pictures, drawings, newsletters and articles in the field of the history of automobile manufacturers and on the subject of automobiles, automobile maintenance and repair, automobile racing, automobile competitions, lifestyle, culture, fashion, design, motor and automotive news, sports, entertainment and safe driving schools; speed checking apparatus for vehicles, namely speedometers and speed indicators, automatic steering apparatus for vehicles, namely, simulators for the steering and control of vehicles; automatic indicators of low pressure in vehicle tyres; voltage regulators for vehicles; electronic mileage recorders for vehicles; hands free kits for cellular phones; electric locks for vehicles; electronic keys for automobiles; control units of central locking systems for vehicles; navigation apparatus for vehicles, being on-board computers; electronic accumulators for vehicles; accumulators, electric, for vehicles; electronic kilometer recorders for vehicles; vehicle radios; car televisions; remote control apparatus for radios, televisions and stereos; battery starter cables for motors; thermostats for vehicles; vehicle breakdown warning triangles; electric air bag deactivation switches for automobiles; magnets; decorative magnets; lanyards especially adapted for holding cellular phones, MP3 players, cameras, video cameras, eyeglasses, sunglasses, magnetic encoded cards; cases especially made for photographic apparatus and instruments; cases adapted for CD players; cases adapted for DVD players; cases adapted for MP3 players
International Class 18 - Boxes of leather or leatherboard; cases, of leather or leatherboard; key cases, being leatherware and leatherboard; backpacks; knapsacks; haversacks; all purpose sports bags; business and note card cases, being notecases; travelling sets, being leatherware, consisting of __________ (Applicant must identify the contents of the sets, e.g. suitcases and trunks.); handbags; shoulder bags; clutch bags; tote bags; pocket wallets; purses; rucksacks; school bags; sling bags for carrying infants; slings for carrying infants; suitcases; travelling bags; travelling trunks; valises; luggage; vanity cases sold empty; duffel bags; trolley duffle bags; waistbags; satchels; boston bags; non-insulated kids' school lunch bags and backpacks, not of paper; umbrellas; golf umbrellas; umbrella covers
International Class 28 - Amusement apparatus adapted for use with an external display screen or monitor; amusement apparatus adapted for use with an external display screen or monitor to be used in amusement parks; apparatus for electronic games adapted for use with an external display screen or monitor; video game machines for use with televisions; video game machines; television game sets, namely, games adapted for use with television receivers; apparatus for games, namely, bats for playing outdoor games, darts, gaming tables and apparatus for electronic games other than those adapted for use with an external display screen or monitor; amusement game machines, automatic and coin-operated, apparatus for playing video games, namely, video game joysticks and video game consoles; pocket-sized apparatus for playing video games, namely, hand held units for playing video games other than those adapted for use with an external display screen or monitor and hand held game consoles; pocket-sized video games namely, hand held units for playing video games other than those adapted for use with an external display screen or monitor; pocket-sized electronic games, namely, hand held units for playing video games other than those adapted for use with an external display screen or monitor; hand-held video games, namely, hand held units for playing video games other than those adapted for use with an external display screen or monitor; portable electronic games namely, hand held units for playing video games other than those adapted for use with an external display screen or monitor; portable electronic action toys; hand held units for playing video games for use with an external display screen or monitor, stand alone video game machines; computer game equipment, namely, computer game joysticks and game controllers for computer games; electronic games consoles adapted for use with an external display screen or monitor; games consoles, namely ___________ (Applicant must further identify the type of purpose of the consoles, e.g. video games consoles, handheld games consoles for playing video games.); gamepads for use with game consoles in the nature of video game controllers; handheld game consoles; handheld video game consoles; video game consoles; video game consoles for use with an external display screen or monitor; protective carrying cases specially adapted for video game consoles for use with an external display screen or monitor; bags specially adapted for video game consoles; scale model vehicles; scale model cars; scale model racing cars; scale model racing vehicles; racing car model silhouettes in the nature of toy cars; toy full-size car replicas; toy full-size vehicle replicas; toy full-size steering wheel replicas; resin toy models featuring racing scenes; scale model drivers; scale model pit crews; vehicle construction toys; toy vehicles in the nature of trucks; toy vehicles; toy racing cars tracks; toy steering wheels; pull-along toy vehicles; toy trucks with cars; toy pedal karts for kids; ride-on toy cars for children in pedal version or working with batteries; toy cars for children in pedal version or working with batteries; toy go-karts for children in pedal version or working with batteries; toy building structures and roadways, namely, race pit-stops; toy vehicle tracks, namely, race tracks; toy trucks; toy scale model trailers for transporting cars; radio-controlled toy vehicles; radio-controlled toy cars; toy scale model gasoline service stations; toy scale model car garages; toy scale model car showrooms; toy telephones; plush toys; plush toy steering wheels; teddy bears; playing cards; novelty toy items, namely, sticks for fans and for entertainment in the nature of foam fingers and hands, and toy glow sticks; novelty toy items, namely, toy sticks for fans and for entertainment shaped as flags in the nature of foam fingers and hands, and toy glow sticks; toy lanyards
The wording in classes 12, 16, 25 and 35 is acceptable.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Response Guidelines
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
571-272-3162
alain.lapter@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.