UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/18/2011

 

THIS IS A FINAL ACTION.

 

This Office Action responds to applicant’s correspondence dated June 21, 2011.

 

The requirement for an acceptable identification of goods is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

IDENTIFICATION OF GOODS INDEFINITE – CLARIFICATION REQUIRED

 

The following underlined wording in the identification of goods is indefinite and must be clarified for the reasons set forth in brackets below.  The bolded wording is misclassified as also indicated in brackets.  See TMEP §1402.01. 

 

Class 12

Aftermarket parts and accessories for vehicles [The type of vehicle must be specified, for instance, “automobiles” or “land vehicles”], namely, replacement wheels, tires, brake pads, brake shoes, steering wheels, speed controllers [Specify whether “electronic speed controllers”], cabs, enclosures [Clarify type], radios [Misclassified; radios are classified in Class 9] and MP3 players [Class 9], powertrain components, namely, axles, engine parts, [Engine parts are classified in Class 7 and must be specified using their common name(s); see the ID Manual for assistance and examples] differentials and motors [Class 7 goods], and suspension components, namely, shock absorbers, springs and lift kits, [The nature and primary components of the kits must be specified] brushguards, [“brush guards” should be written in two words], step bars for facilitating vehicle access, and light kits [The nature and primary components of the kits must be specified] for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles, trailers; Structural parts for gasoline and electric-powered automobiles

 

 

Applicant must amend this wording to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the goods, then applicant must describe the nature of the goods as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods, for example, if accurate: 

 

Class 7

Aftermarket parts and accessories for land vehicles, namely, engine parts, namely, _______________ {specify using common commercial name(s)}, motors

 

Class 9

Aftermarket parts and accessories for vehicles, namely, radios for land vehicles, MP3 players for land vehicles, Global positioning systems (GPS) for land vehicles

 

Class 12

Aftermarket parts and accessories for land vehicles, namely, wheels, tires, brake pads, brake shoes, steering wheels, electronic speed controllers, cabs, enclosures, namely, _______________ {specify using common commercial name and classify accordingly using ID Manual, for instance, “soft tops for vehicles”}, axles, differentials and suspension components, namely, shock absorbers, springs and lift kits primarily consisting of_____________ {specify components of kits}, brush guards, step bars for facilitating vehicle access, and light kits primarily consisting of __________ {specify components}, all for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles and trailers; Structural parts for gasoline and electric-powered automobiles

 

 

See TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e). 

 

Please note that, if applicant elects to use wording in the identification of goods and/or services that diverges from the wording provided in the Identification Manual, applicant should be prepared to 1) provide examples of similar wording used for the same goods and/or services in registrations on the principal register, or 2) show that applicant’s proposed wording is otherwise acceptable as definite.

 

REQUIREMENTS FOR A COMBINED APPLICATION

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)  Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

(2)  Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

INSUFFICIENT FEE – ADDITIONAL FEE(S) REQUIRED

 

The application identifies goods that are classified in at least 3 classes; however, the fees submitted are sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

RESPONSE GUIDELINES FOR FINAL OFFICE ACTIONS

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Edward Fennessy/

Trademark Examining Attorney

Law Office 114

1.571.272.8804

Edward.Fennessy@USPTO.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 7/18/2011 FOR

SERIAL NO. 85246634

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 7/18/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.