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. 79264845
Mark: HJ
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Correspondence Address: CHONGQING SOUTHWEST; INTELLECTUAL PROPER 38F, NEW YORK. NEW YORK BUILDING, |
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Applicant: CHONGQING HONGJIANG MACHINERY; CO., LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1481689
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
INTRODUCTION
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).
REQUIREMENT OF DEFINITE IDENTIFICATION
The wording “fuel conversion apparatus for internal combustion engines” in the identification of goods is indefinite, in that it is too broad and so can encompass more than one distinct, identifiable good in Class 7. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “carburetors” are in Class 7, as are “fuel injectors.” Accordingly, applicant should further specify the nature of the goods being referenced, and a suggested amendment is offered below.
Please note, in addition to the need for this further specification so as to allow for appropriate identification and classification, the USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.
Applicant may adopt the following identification, if accurate:
Class 7: Igniting devices for internal combustion engines; fuel conversion apparatus for internal combustion engines, namely, carburetors; turbines, other than for land vehicles; taps being parts of machines, engines or motors; hydraulic controls for machines, motors and engines; sparking plugs for internal combustion engines; gasoline engines not for land vehicles
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.
AMENDMENT/CLARIFICATION OF LEGAL ENTITY TYPE REQUIRED
Alternatively, if applicant maintains that the legal entity in the application (i.e., “Corporation”) properly identifies applicant’s entity type, applicant must provide an explanation as to why, in this instance, the identified entity type is more similar to the designation of “Co., Ltd.” than to the legal entities listed in TMEP Appendix D: “Limited Company” or “Limited Liability Company.” See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
APPLICANT REQUIRED TO HAVE U.S.-LICENSED ATTORNEY
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
ADVISORY: ADDITIONAL REFERENCE INFORMATION AVAILABLE ONLINE AT USPTO WEBSITE
The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more. Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines. The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services. The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.
For information on how to identify the owner of a mark in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 4, “Applicant information.”
For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”
Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
FOR QUESTIONS REGARDING THIS OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action
/Victor Cerda/
Examining Attorney
Trademark Law Office 123
(571) 270-1280
Victor.Cerda@uspto.gov
RESPONSE GUIDANCE