United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79315234
Mark: VAN DIEMEN
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Correspondence Address: |
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Applicant: Oakroom Property Holdings Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1601288
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 (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 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
IDENTIFICATION OF GOODS & SERVICES
Further, the wording “remote controlled vehicles” and “remote controlled rail vehicles” must be clarified as to the nature of the vehicles, such as “land vehicles” as remoted controlled toy vehicles are in Class 028 and the wording “vehicle covers” must be clarified as to the specific type of covers being provided as “fitted vehicle covers” are goods in Class 012 whereas “unfitted vehicle covers” are goods in Class 022. Additionally, the wording “parts and fittings for all the aforementioned goods” must be clarified as to the specific type of parts and fittings being provided or that these are structural in nature.
Additionally, the wording in Class 025, “Clothing”, “outer clothing”, “waterproof clothing”, and “sports clothing” must be clarified as to the specific items being provided, such as “pants”, “jackets”, “Waterproof footwear”, and “sports vests”. Further, the wording “headgear” must be clarified as being a type of headwear in Class 025 as the word “headgear” encompasses types of protective helmets in Class 009 and the wording “shell tops” must be clarified as being a type of clothing item.
Further, the wording in Class 035, “business administration”, “office functions”, “advertising”, “promotion services”, “event marketing”, and “promotion of goods and services through sponsorship” must be clarified as to the type of services being provided, such as “business administration services”, “providing office functions”, “advertising services”, “Sales promotion”, “event marketing services”, and “promotion of goods and services of others”.
Additionally, the wording in Class 037, “providing information relating to safe maintenance and repair” must be clarified as to the goods being maintained and repaired subject to the information and the wording “fitting of replacement vehicle parts”, “tuning of engines”, “overhaul of vehicles”, “vehicle tyre fitting and repair; information and consultancy services relating to vehicle repair”, and “servicing” must be clarified as to the specific services being provided, such as “vehicle repair services”, “combustion engine repair”, “combustion engine end cover overhaul services”, “Repair and maintenance of vehicle tires”, and “Vehicle polishing”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Further, the identification of goods and services 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 services that have been deleted from registrations, (2) goods and 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 and services.
Applicant may adopt the following identification, if accurate:
Class 012: Vehicles namely, {Specify type of vehicles by common commercial name in International Class 012, e.g. Light rail vehicles, trucks, trains, land vehicles}; motor vehicles, namely, {Specify type of vehicles by common commercial name in International Class 012, e.g. Electrically powered motor vehicles, cars, Two-wheeled motor vehicles}; automobiles; cars; sports cars; racing cars; vehicles for locomotion by land, air or water namely, {Specify type of goods by common commercial name in International Class 012, e.g. yachts, airplanes, cars, trucks}; buses; trucks; vans; motorcycles; scooters namely, {Specify type of scooters by common commercial name in International Class 012, e.g. Water scooters, Motor scooters, Push scooters}; bicycles; land vehicles; engines for land vehicles; motors for land vehicles; remote controlled land vehicles; remote controlled rail land vehicles; automobile bodies; automobile tires; bumpers for automobiles; caps for vehicle petrol gas tanks; casings for pneumatic tires; cigar lighters for automobiles; covers for vehicle steering wheels; gear boxes for land vehicles; head-rests for vehicle seats; hub caps; hubs for vehicle wheels; mudguards; safety seats for children, for vehicles; tires for vehicle wheels; Fitted vehicle covers; vehicle wheel rims; vehicle wheel spokes; vehicle wheel tires; vehicle wheels; structural parts and fittings for all the aforementioned goods
Class 025: Clothing, namely, {indicate specific item by common commercial name in International Class 025, e.g. shirts, pants, skirts, etc.}; footwear, headwear; sweaters and sweatshirts; shirts; polo shirts; blouses; shell tops as clothing; t-shirts; camisoles; trousers; shorts; tracksuits; loungewear; dresses; jumpsuits; outer clothing namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; gilets; jackets; jumpers; knitwear hoodies; coats; parkas; jerseys; bath robes; underpants; beach clothes, namely, swimming caps, swim wear, bikinis, tankinis, swimming trunks, swim suits; waterproof clothing namely, {Specify type of clothing by common commercial name in International Class 025, e.g. Waterproof footwear, Wind pants, Foul weather gear}; sports clothing namely, {Specify type of clothing by common commercial name in International Class 025, e.g. Sports vests, Sports shirts, Sports jackets}; footwear; sports shoes; headwear, namely, hats, caps, bandanas, beanies, ear muffs, headbands, headscarves; snoods; gloves; visors being headwear; ear muffs; parts and fittings for all the aforementioned goods, namely, underarm gussets and ready-made linings being parts of clothing
Class 035: Business management; business administration services; providing office functions; advertising services; promotion services namely, {Specify type of promotion services by common commercial name in International Class 035, e.g. Promoting the goods and services of others, Sales promotion, Promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via text messages}; planning and conducting of trade fairs, exhibitions and presentations for commercial or advertising purposes; event marketing services; sales promotion for others; arranging of exhibitions for advertising purposes; arranging of exhibitions for commercial purposes; commercial consultancy; business information services; promotion of goods and services of others through sponsorship; public relations services; information, advisory and consultancy services relating to all the aforesaid
Class 037: Repair and maintenance of motor vehicles, bicycles, and parts thereof and of engines for motor vehicles and parts thereof; providing information relating to safe maintenance and repair, namely, provision of information relating to the repair or maintenance of {specify type of goods being repaired and maintained}; installation of parts for vehicles; fitting of replacement vehicle parts being vehicle repair services; tuning of engines, namely, combustion engine repair; overhaul of vehicles, namely, combustion engine end cover overhaul services; advisory services relating to vehicle maintenance; Repair and maintenance of vehicle tires, namely, vehicle tyre fitting and repair; information and consultancy services relating to vehicle repair; maintenance, servicing in the nature of {specify type of services by common commercial name in International Class 037, e.g. Vehicle polishing, Vehicle lubrication, Vehicle detailing} and repair of vehicles; advisory services relating to vehicle repair; garage services for vehicle repair; information, advisory and consultancy services relating to all the aforesaid
Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b).
The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted. 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 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 services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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.
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal 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 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, 601.01(a). In this case, applicant’s domicile is identified in the application as United Kingdom. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. 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.
If the Applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned Examining Attorney.
O'Brien, Jennifer
/Jennifer O'Brien/
Examining Attorney
Law Office 120
(571)272-4579
Jennifer.O'Brien@uspto.gov
RESPONSE GUIDANCE