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. 79311822
Mark: LAMBORGHINI
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Correspondence Address:
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Applicant: Automobili Lamborghini 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. 1593388
Notice of Provisional Partial 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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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 partial refusal. This is a provisional partial 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). This refusal applies to only the following goods in International Class 12 in the U.S. application: spray prevention flaps for vehicles, car seats, driverless cars [autonomous cars].
Class 12
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The wording “car seats” in the identification of goods is indefinite and must be clarified because the nature of the car seat must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The identification of goods contains brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” See TMEP §1402.12.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may substitute the following wording, if accurate:
“Cars; electric cars; automobile tyres; spray prevention flaps for vehicles, namely, mud flaps; automobile hoods; steering wheels for vehicles; anti-theft devices for vehicles; bumpers for automobiles;{specify the nature of the car seats e.g.; motor car seats; children’s car seats; car seats for pets; safety seats for use in cars; safety seats for children for} car seats; horns for motor cars; automobile bodies; automobile engines; motor racing cars; automobile chassis; shock absorbers for automobiles; upholstery for automobiles; electric motors for motor cars; autonomous driverless cars; wheel rims for automobiles; automobiles and structural parts therefor; racing seats for automobiles; interior trim parts of automobiles; automatic gearboxes for motor cars; gear shifts for automobiles; powerboats; cycle cars; bicycles; electric vehicles; hybrid cars; brakes for motor cars; disc brake pads for land vehicles; spoilers for vehicles; spoilers for water vehicles; spoilers for land vehicles; air flow spoilers for vehicles; spoilers for air vehicles; hydraulic brake pressure regulators for vehicles; aerodynamic attachments for vehicle bodies; yachts; water scooters; boats; jet boats; ships; inflatable boats.”
Failing to respond to this provisional refusal Office action will result in partial abandonment of the U.S. application. If applicant does not respond within the six-month period, the goods identified above, to which this provisional refusal applies, will be deleted from the application. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
In such case, the application will then proceed only with the following goods in International Class 12: Cars; electric cars; automobile tyres; automobile hoods; steering wheels for vehicles; anti-theft devices for vehicles; bumpers for automobiles; horns for motor cars; automobile bodies; automobile engines; motor racing cars; automobile chassis; shock absorbers for automobiles; upholstery for automobiles; electric motors for motor cars; wheel rims [for automobiles]; automobiles and structural parts therefor; racing seats for automobiles; interior trim parts of automobiles; automatic gearboxes for motor cars; powerboats gear shifts for automobiles; cycle cars; bicycles; electric vehicles; hybrid cars; brakes for motor cars; disc brake pads for land vehicles; spoilers for vehicles; spoilers for water vehicles; spoilers for land vehicles; air flow spoilers for vehicles; spoilers for air vehicles; hydraulic brake pressure regulators for vehicles; aerodynamic attachments for vehicle bodies; yachts; water scooters; boats; jet boats; ships; inflatable boats”.
Applicant is required to be represented by a U.S.-licensed attorney because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories 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); TMEP §601.01(a). In this case, applicant’s domicile is identified in the application as Italy. For more information, see the U.S. Counsel webpage about this requirement and Hiring a U.S.-licensed trademark attorney about finding an attorney.
To appoint a U.S.-licensed attorney in this application, 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); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
/Anastasia X. Mebane/
Anastasia X. Mebane
Examining Attorney
Law Office 129
(571)-272-1725
Anastasia.Mebane@uspo.gov
RESPONSE GUIDANCE