Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79288335 NISSAN (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7928833 5/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Complete Response to Office Action with Exhibit A is attached in evidence section below.

EVIDENCE
Evidence has been attached: Response to Office Action with Exhibit A
Original PDF file:
evi_13122620134-202102101 23510289869_._se_to_Offic e_Action_with_Exhibit_A_f or_U.S._App_No._79288335.pdf
Converted PDF file(s) ( 48 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39Evidence-40Evidence-41Evidence-42Evidence-43Evidence-44Evidence-45Evidence-46Evidence-47Evidence-48

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Measuring apparatus; measuring instruments; chargers; battery chargers; electric batteries for vehicles; electrical cells and batteries; fuel cells; intercommunication apparatus; navigation apparatus for vehicles (on-board computers); computer software; computer programs; downloadable applications for use with mobile devices for the management and charging of electric batteries for vehicles; cables, electric; wires, electric; electronic publications, downloadable; anti-theft warning apparatus; theft prevention installations, electric; keys (encoded -); inverters [electricity]; apparatus for recording of sound; apparatus for recording of images; pressure measuring apparatus; cases adapted for computers; cases for keys (encoded-); CD storage wallets; cell phone cases; cell phone straps; computer peripheral devices; mouse [computer peripheral]; mouse pads; spectacles [optics]; spectacle cases; eyeglass cords; straps for flash memories; protective helmets; straps for tablet computers; laser pointers; camera monopods; tripods for cameras; computer, electronic and electric cable managers, organizers and keepers; selfie sticks [hand-held monopods]
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Measuring apparatus; Battery chargers for use with vehicle batteries; measuring instruments; battery chargers; chargers; electric batteries for vehicles; electrical cells and batteries; fuel cells; navigation apparatus for vehicles in the nature of on-board computers; downloadable computer software for accessing vehicle telecommunications services, vehicle navigation services and vehicle security services; intercommunication apparatus; downloadable computer programs for accessing vehicle telecommunications services, vehicle navigation services and vehicle security services; navigation apparatus for vehicles (on-board computers); downloadable applications for use with mobile devices for the management and charging of electric batteries for vehicles; computer software; electric cables for use to charge vehicle batteries; computer programs; electric wires for use to charge vehicle batteries; electronic publications, downloadable, in the nature of owners manuals or service manuals in the field of automobile; cables, electric; anti-theft warning apparatus being theft alarms; wires, electric; theft prevention installations, electric being theft alarms; electronic publications, downloadable; encoded key cards; anti-theft warning apparatus; inverters for electricity; theft prevention installations, electric; apparatus for recording of sound; keys (encoded -); apparatus for recording of images; inverters [electricity]; pressure measuring apparatus; cases adapted for computers; cases specially adapted for encoded key cards; CD storage wallets; cell phone cases; cases for keys (encoded-); cell phone straps; computer peripheral devices; mouse being computer peripheral; mouse pads; spectacles being optics; mouse [computer peripheral]; spectacle cases; eyeglass cords; spectacles [optics]; straps specially adapted for blank flash memory cards; protective helmets; straps for tablet computers; straps for flash memories; laser pointers; camera monopods; tripods for cameras; computer, electronic and electric cable managers, organizers and keepers being sleeves for electric cables; selfie sticks being hand-held monopods; computer, electronic and electric cable managers, organizers and keepers; selfie sticks [hand-held monopods]Class 009 for Battery chargers for use with vehicle batteries; battery chargers; electric batteries for vehicles; electrical cells and batteries; fuel cells; navigation apparatus for vehicles in the nature of on-board computers; downloadable computer software for accessing vehicle telecommunications services, vehicle navigation services and vehicle security services; downloadable computer programs for accessing vehicle telecommunications services, vehicle navigation services and vehicle security services; downloadable applications for use with mobile devices for the management and charging of electric batteries for vehicles; electric cables for use to charge vehicle batteries; electric wires for use to charge vehicle batteries; electronic publications, downloadable, in the nature of owners manuals or service manuals in the field of automobile; anti-theft warning apparatus being theft alarms; theft prevention installations, electric being theft alarms; encoded key cards; inverters for electricity; apparatus for recording of sound; apparatus for recording of images; pressure measuring apparatus; cases adapted for computers; cases specially adapted for encoded key cards; CD storage wallets; cell phone cases; cell phone straps; computer peripheral devices; mouse being computer peripheral; mouse pads; spectacles being optics; spectacle cases; eyeglass cords; straps specially adapted for blank flash memory cards; protective helmets; straps for tablet computers; laser pointers; camera monopods; tripods for cameras; computer, electronic and electric cable managers, organizers and keepers being sleeves for electric cables; selfie sticks being hand-held monopods

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 012 for Vehicles for locomotion by land, air, water or rail; automobiles; electric vehicles; waggons; trucks; vans [vehicles]; sport utility vehicles; motor buses; recreational vehicles (rv); sports cars; racing cars; lorries; fork lift trucks; tractors; towing tractors; trailers; semi-trailers; structural parts for automobile; engines for land vehicles; motors for land vehicles; bodies for vehicles; vehicle chassis; transmissions, for land vehicles; transmission shafts for land vehicles; gearing for land vehicles; clutches for land vehicles; axles for vehicles; vehicle suspension springs; shock absorbers for automobiles; vehicle wheels; tires for vehicle wheels; hubs for vehicle wheels; adhesive rubber patches for repairing tire inner tubes; brakes for vehicles; brake pads for land vehicles; windshields; windshield wipers [vehicle parts]; vehicle bumpers; steering units for land vehicles; horns for vehicles; direction signals for vehicles; vehicle seats; safety belts for vehicle seats; head-rests for vehicle seats; reversing alarms for vehicles; anti-theft devices for vehicles; air bags [safety devices for automobiles]; rearview mirrors; tailboard lifts [parts of land vehicles]; spoilers for vehicles; luggage carriers for vehicles; mudguards; anti-skid chains; vehicle covers [shaped]; seat covers for vehicles; air pumps [vehicle accessories]; ski carriers for vehicles; cigar lighters for land vehicles; safety seats for children; hoods for vehicles; doors for vehicles; space vehicles; aeroplanes; seaplanes; aircraft; carts; motorcycles; boats; ferry boats; ships; yachts; bicycles; audible warning systems for cycles; cycle chains; motors for cycles; cycle saddles; ashtrays for automobiles; brake discs for vehicles; driverless cars [autonomous cars]; side view mirrors for vehicles; engine mounts for land vehicles; caps for vehicle petrol [gas] tanks; torque converters for land vehicles
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Vehicles for locomotion by land, air, water or rail; Automobiles; electric-powered motor vehicles; electric vehicles; wagons; waggons; trucks; vans being vehicles; vans [vehicles]; sport utility vehicles; motor buses; recreational vehicles, namely, rv campers; recreational vehicles (rv); sports cars; racing cars; lorries; fork lift trucks; tractors; towing tractors; trailers; semi-trailers; structural parts for automobile; engines for land vehicles; motors for land vehicles; bodies for vehicles; vehicle chassis; transmissions, for land vehicles; transmission shafts for land vehicles; gearing for land vehicles; clutches for land vehicles; axles for vehicles; vehicle suspension springs; shock absorbers for automobiles; vehicle wheels; tires for vehicle wheels; hubs for vehicle wheels; adhesive rubber patches for repairing tire inner tubes; brakes for vehicles; brake pads for land vehicles; windshields being land vehicle parts; windshields; windshield wipers being vehicle parts; windshield wipers [vehicle parts]; vehicle bumpers; steering units for land vehicles; horns for vehicles; direction signals for vehicles; vehicle seats; safety belts for vehicle seats; head-rests for vehicle seats; reversing alarms for vehicles; anti-theft devices for vehicles; air bags being safety devices for automobiles; air bags [safety devices for automobiles]; rearview mirrors; tailboard lifts being parts of land vehicles; tailboard lifts [parts of land vehicles]; spoilers for vehicles; luggage carriers for vehicles; mudguards; anti-skid chains for vehicles; anti-skid chains; fitted vehicle covers; vehicle covers [shaped]; fitted seat covers for vehicles; seat covers for vehicles; air pumps being vehicle accessories; air pumps [vehicle accessories]; ski carriers for vehicles; cigar lighters for land vehicles; safety seats for children; hoods for vehicles; doors for vehicles; space vehicles; aeroplanes; seaplanes; aircraft; carts; motorcycles; boats; ferry boats; ships; yachts; bicycles; audible warning systems for cycles in the nature of security alarms; audible warning systems for cycles; cycle chains; motors for cycles; cycle saddles; ashtrays for automobiles; brake discs for vehicles; driverless cars being autonomous cars; driverless cars [autonomous cars]; side view mirrors for vehicles; engine mounts for land vehicles; caps for vehicle petrol and gas tanks; caps for vehicle petrol [gas] tanks; torque converters for land vehiclesClass 012 for Automobiles; electric-powered motor vehicles; wagons; trucks; vans being vehicles; sport utility vehicles; motor buses; recreational vehicles, namely, rv campers; sports cars; racing cars; lorries; fork lift trucks; tractors; towing tractors; trailers; semi-trailers; structural parts for automobile; engines for land vehicles; motors for land vehicles; bodies for vehicles; vehicle chassis; transmissions, for land vehicles; transmission shafts for land vehicles; gearing for land vehicles; clutches for land vehicles; axles for vehicles; vehicle suspension springs; shock absorbers for automobiles; vehicle wheels; tires for vehicle wheels; hubs for vehicle wheels; adhesive rubber patches for repairing tire inner tubes; brakes for vehicles; brake pads for land vehicles; windshields being land vehicle parts; windshield wipers being vehicle parts; vehicle bumpers; steering units for land vehicles; horns for vehicles; direction signals for vehicles; vehicle seats; safety belts for vehicle seats; head-rests for vehicle seats; reversing alarms for vehicles; anti-theft devices for vehicles; air bags being safety devices for automobiles; rearview mirrors; tailboard lifts being parts of land vehicles; spoilers for vehicles; luggage carriers for vehicles; mudguards; anti-skid chains for vehicles; fitted vehicle covers; fitted seat covers for vehicles; air pumps being vehicle accessories; ski carriers for vehicles; cigar lighters for land vehicles; safety seats for children; hoods for vehicles; doors for vehicles; space vehicles; aeroplanes; seaplanes; aircraft; carts; motorcycles; boats; ferry boats; ships; yachts; bicycles; audible warning systems for cycles in the nature of security alarms; cycle chains; motors for cycles; cycle saddles; ashtrays for automobiles; brake discs for vehicles; driverless cars being autonomous cars; side view mirrors for vehicles; engine mounts for land vehicles; caps for vehicle petrol and gas tanks; torque converters for land vehicles

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 035 for Advertising; business management; business administration; office functions; retail or wholesale services for land vehicles, structural parts and fittings therefor; sales promotion for others; compilation of information into computer databases; systemization of information into computer databases; advertising and publicity services for vehicles; import-export agency services; providing information about land vehicles, namely, consumer product information and price comparison information; providing price-comparison information in the field of fuel; commercial information and advice for consumers [consumer advice shop]; administration of consumer loyalty programs; organization of exhibitions for commercial or advertising purposes; organization of trade fairs; vehicle fleet (business management of a -) [for others]
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Advertising; business management; business administration; office functions; retail or wholesale services for land vehicles, structural parts and fittings therefor; retail and wholesale store services for land vehicles, structural parts and fittings therefor; sales promotion for others; compilation of information into computer databases; systemization of information into computer databases; advertising and publicity services for vehicles; import-export agency services; providing information about land vehicles, namely, consumer product information and price comparison information; providing price-comparison information in the field of fuel; commercial information and advice for consumers [consumer advice shop]; commercial information and advice for consumers in the choice of products and services; administration of consumer loyalty programs; business administration of consumer loyalty programs; organization of exhibitions for commercial or advertising purposes; organization of trade fairs; vehicle fleet (business management of a -) [for others]; business management in the field of vehicle fleets for othersClass 035 for Advertising; business management; business administration; office functions; retail and wholesale store services for land vehicles, structural parts and fittings therefor; sales promotion for others; compilation of information into computer databases; systemization of information into computer databases; advertising and publicity services for vehicles; import-export agency services; providing information about land vehicles, namely, consumer product information and price comparison information; providing price-comparison information in the field of fuel; commercial information and advice for consumers in the choice of products and services; business administration of consumer loyalty programs; organization of exhibitions for commercial or advertising purposes; organization of trade fairs; business management in the field of vehicle fleets for others

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 036 for Insurance; financial affairs; monetary affairs; real estate affairs; accident insurance underwriting; brokerage for hire-purchase; credit and cash card services; financial information; financing services; issuance of credit cards; appraisal of used automobiles; insurance services relating to vehicles; providing of comprehensive warranty services for land vehicles, structural parts and fittings therefor; extended warranty insurance services; loans [financing]; automobile lease financing; lease purchase financing of vehicles; debit card services; e-wallet payment services
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Insurance; Insurance brokerage; financial affairs; financial affairs, namely, financial information, management and analysis services; monetary affairs; monetary affairs, namely, financial information, management and analysis services; real estate affairs; real estate affairs, namely, real estate agency services; accident insurance underwriting; brokerage for hire-purchase; credit and cash card services; credit and cash card payment processing services; financial information; financing services; issuance of credit cards; appraisal of used automobiles; insurance services relating to vehicles; insurance services relating to vehicles, namely providing vehicle insurance rate quotes; providing of comprehensive warranty services for land vehicles, structural parts and fittings therefor; providing of comprehensive extended warranty services for land vehicles, structural parts and fittings therefor, namely, service contracts; extended warranty insurance services; extended warranty insurance services, namely, service contracts; loans [financing]; financing of loans; automobile lease financing; lease purchase financing of vehicles; debit card services; debit card services, namely, processing of debit card payments; e-wallet payment services; electronic wallet payment services, namely, bill payment services provided via an electronic walletClass 036 for Insurance brokerage; financial affairs, namely, financial information, management and analysis services; monetary affairs, namely, financial information, management and analysis services; real estate affairs, namely, real estate agency services; accident insurance underwriting; brokerage for hire-purchase; credit and cash card payment processing services; financial information; financing services; issuance of credit cards; appraisal of used automobiles; insurance services relating to vehicles, namely providing vehicle insurance rate quotes; providing of comprehensive extended warranty services for land vehicles, structural parts and fittings therefor, namely, service contracts; extended warranty insurance services, namely, service contracts; financing of loans; automobile lease financing; lease purchase financing of vehicles; debit card services, namely, processing of debit card payments; electronic wallet payment services, namely, bill payment services provided via an electronic wallet

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 039 for Transport; packaging and storage of goods; travel arrangement; providing transportation information; car transport; vehicle rental; vehicle breakdown towing services; passenger transport; transportation information; providing road and traffic information; car parking; leasing of vehicles; GPS navigation services; car sharing services; automotive subscription services, namely, providing temporary use and rental of automobiles on a reoccurring daily, weekly, monthly, or yearly basis; electricity storage; electricity distribution; distribution and transmission of electricity between electric vehicle batteries and battery terminals for household purposes enabled by downloadable applications for the management of distribution and transmission of electricity for use with mobile devices; providing information relating to vehicle driving services; providing traffic information; route planning [navigation services]
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Transport; Packaging and storage of goods; travel arrangement, namely, arranging transport for travelers; travel arrangement; providing transportation information; car transport; vehicle rental; vehicle breakdown towing services; passenger transport; transportation information; providing road and traffic information; car parking; leasing of vehicles; GPS navigation services; car sharing services; automotive subscription services, namely, providing temporary use and rental of automobiles on a reoccurring daily, weekly, monthly, or yearly basis; providing electricity storage; electricity storage; electricity distribution; distribution and transmission of electricity between electric vehicle batteries and battery terminals for household purposes enabled by downloadable applications for the management of distribution and transmission of electricity for use with mobile devices; providing information relating to vehicle driving services; providing traffic information; route planning being travel navigation services; route planning [navigation services]Class 039 for Packaging and storage of goods; travel arrangement, namely, arranging transport for travelers; providing transportation information; car transport; vehicle rental; vehicle breakdown towing services; passenger transport; transportation information; providing road and traffic information; car parking; leasing of vehicles; GPS navigation services; car sharing services; automotive subscription services, namely, providing temporary use and rental of automobiles on a reoccurring daily, weekly, monthly, or yearly basis; providing electricity storage; electricity distribution; distribution and transmission of electricity between electric vehicle batteries and battery terminals for household purposes enabled by downloadable applications for the management of distribution and transmission of electricity for use with mobile devices; providing information relating to vehicle driving services; providing traffic information; route planning being travel navigation services

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co., Ltd.), a corporation of Japan      Email Address: XXXX

Proposed: Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co., Ltd.), a corporation of Japan
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording "NISSAN" surrounded by two half-circles.
Correspondence Information (current):
      Timothy J. Lyden
      PRIMARY EMAIL FOR CORRESPONDENCE: boxip@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): timothy.lyden@hoganlovells.com

The docket/reference number is 1C0829.01182.
Correspondence Information (proposed):
      Timothy J. Lyden
      PRIMARY EMAIL FOR CORRESPONDENCE: boxip@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): timothy.lyden@hoganlovells.com; carolyn.lynn@hoganlovells.com; cheryl.fountain@hoganlovells.com

The docket/reference number is 1C0829.01182.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Timothy J. Lyden/     Date: 02/10/2021
Signatory's Name: Timothy J. Lyden
Signatory's Position: Attorney of Record, Virginia Bar Member

Signatory's Phone Number: 703-610-6100 Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Timothy J. Lyden
   Hogan Lovells US LLP
   Attn: Box Intellectual Property
   8350 Broad Street, 17th Floor
   Tysons, Virginia 22102
Mailing Address:    Timothy J. Lyden
   Hogan Lovells US LLP
   Attn: Box Intellectual Property
   8350 Broad Street, 17th Floor
   Tysons, Virginia 22102
        
Serial Number: 79288335
Internet Transmission Date: Wed Feb 10 13:13:30 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202102101313305
41999-79288335-76015e296c102e65d1d66badb
c99693e8fa7728eeb41d6ac2348bd693c18312cd
-N/A-N/A-20210210123510289869