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. 79279633
Mark: MASERATI TROFEO
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Correspondence Address: |
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Applicant: MASERATI S.P.A.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1516710
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).
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
For instance, services such as “teaching”, “training”, “forums”, “colloquiums”, “seminars”, “workshops”, and “tutoring” all require the subject matter of the services to be specified.
In addition, wording such as “entertainment services”, “sporting and cultural activities”, “competitions”, and “sporting events” all require the common commercial name to be further clarified.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the services.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL
CAPS below offers guidance and/or shows the changes being proposed for the identification of services. If there is wording in the applicant’s version of the
identification of services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant
should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 41: Teaching IN THE FIELD OF ____________ {specify
subject matter}; providing of training IN THE FIELD OF ____________ {specify subject matter}; entertainment services, NAMELY, ___________ {specify common
commercial name}; sporting and cultural activities, NAMELY, ___________ {specify events}; timing of sports events; organization of sports competitions; organization of
____________ {specify subject matter} competitions (education or entertainment); arranging and conducting of in-person educational forums IN THE FIELD OF ____________ {specify subject matter}; arranging and conducting of EDUCATIONAL conferences; arranging and conducting of EDUCATIONAL colloquiums IN THE FIELD OF ____________ {specify subject matter}; arranging and conducting of seminars IN THE FIELD OF ____________
{specify subject matter}; arranging and conducting of workshops (training) IN THE FIELD OF ____________ {specify subject matter}; publication of books; online
publication of electronic books and journals; health club services (health and fitness training) FOR PHYSICAL EXERCISE; NIGHT
club services (entertainment or education); physical education; training services IN THE FIELD OF ____________ {specify subject matter} provided via
simulators; amusement park services; personal trainer services (fitness training); tutoring IN THE FIELD OF ____________ {specify subject matter};
organization of automobile races; organization of sporting events, NAMELY, ___________ {specify events}
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
U.S. ATTORNEY REQUIRED
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
For this application to proceed, applicant must explicitly address each requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
RESPONSE GUIDANCE