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: 11/1/2012

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Summary of Issues

 

This non-final Office action contains the following issues that applicant must address:

 

• Statutory Refusal:  Registration is partially refused due to a likelihood of confusion with a registered mark.
• Statutory Refusal:  Registration is partially refused because the mark differs materially in the drawing and on the specimen of use.
• Procedural Requirement:  Clarification of the mark itself is required.
• Procedural Requirement:  Acceptable classification and identification of the goods and services is required.
• Procedural Requirement:  Disclaimer of descriptive and/or generic wording is required as to one class of services.

 

 

Partial Refusal Under Trademark Act §2(d): Likelihood of Confusion

 

Registration of the applied-for mark is refused as to applicant’s services “education” in Class 41 because of a likelihood of confusion with the mark in U.S. Registration No. 3922687.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

The registered mark is MAXIMUM CHALLENGE for educational services in Class 41 identified as “providing kindergarten through 12^th grade classroom instruction.”  Applicant’s proposed mark is MAX CHALLENGE for services in Class 41 identified simply as “education.”

 

Comparing the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

In this case, the marks create a very similar commercial impression because they share the same meaning.  Specifically, the word MAX in applicant’s mark is simply an informal and often-used abbreviation of the word MAXIMUM and is thus its synonym.  See the attached dictionary evidence.  Applicant’s mark MAX CHALLENGE is therefore the same in meaning as registrant’s mark MAXIMUM CHALLENGE; the similar structure of the two marks also creates a similarity in appearance between them.  Consumer confusion has been held likely even for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning.  Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TMEP §1207.01(b).

 

The marks truly only differ in that they sound different when read aloud.  Thus, because the striking similarity in meaning and commercial impression between the two marks is enhanced by their similarity in appearance, the difference between the marks in terms of their sound does not overcome the similarities.  On balance, the marks are therefore similar.

 

Comparing the Services

 

The examining attorney has also considered whether applicant’s services are the same as, or are related in commerce to, registrant’s services.  She finds that they are the same because applicant’s broadly identified services (“education”) encompass registrant’s more narrowly identified services (“education services, namely, providing kindergarten through 12^th grade classroom instruction”).

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue.  See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005.  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identifications set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application uses the broad wording “education” to describe the services; this wording is presumed to encompass all services of the type described, including those in registrant’s more narrow identification.

 

Conclusion

 

Because the marks themselves are similar and the services are the same, applicant’s mark must be refused registration under Trademark Act §2(d) as to the services “education” on the basis of a likelihood of confusion with the registered mark.

 

 

Partial Refusal: Mark Differs Materially in Drawing and Specimen

 

The mark on the specimen for applicant’s Class 4 goods filed under Trademark Act §1(a) disagrees with the mark on the drawing.  In this case, the specimen displays the mark as ROTAX MAX CHALLENGE; and the drawing shows the mark as MAX CHALLENGE.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  The mark on the drawing must be a substantially exact representation of the mark on the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). 

 

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.  However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.  Specifically, the addition of the apparently non-descriptive term ROTAX creates the impression that a company or brand called ROTEX is the source of underlying goods or services called MAX CHALLENGE.  The words are all used together in a sentence on the specimen of use, and the words ROTAX MAX CHALLENGE are the only boldfaced words in the sentence.  A consumer would therefore perceive the mark to be ROTAX MAX CHALLENGE, which adds a significant element to the applied-for mark.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing use in commerce of the mark on the drawing.  See TMEP §807.12(a).; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

 

If applicant cannot satisfy the above requirements, applicant may amend these goods in the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the Section 1(b) goods in the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused as to the specific goods “oils and greases for go-cart engines” that are under a use-in-commerce basis because the specimen does not show the applied-for mark in use in commerce as a trademark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  Applicant must respond to the requirements set forth below.

 

 

Clarification of Mark Required

 

The drawing of the mark is not acceptable because it is not a “substantially exact representation” of the mark as it appears in the foreign application or registration.  See 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §807.12(b); see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988); TMEP §§807.03(f), 1011.01.  Specifically, although the U.S. application contains a standard character claim, applicant overtly states in the application that the foreign registration does not include such a claim; therefore, the marks do not correspond.

 

Applicant must either (1) submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a standard character claim or the legal equivalent.”; or (2) delete the standard character claim from the U.S. application.  TMEP §§807.03(f), 1011.01.

 

If the standard character claim is deleted from the U.S. application, the drawing of the mark will be considered a special form drawing.  See 37 C.F.R. §2.52(b); TMEP §807.04.  In such case, applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following mark description is suggested, if accurate: 

 

The mark consists of the words “MAX CHALLENGE.”

 

 

Classification and Identification of Goods/Services

 

Some of the wording in the identification of goods/services must be clarified because it is indefinite and/or may identify goods/services properly classified in more than one international class.  See TMEP §1402.01. 

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

Where applicant’s goods and/or services are properly classified in other classes, applicant is required to either (1) specify the goods and/or services acceptably, add the appropriate international class(es) to the application, and classify the goods and/or services therein, or (2) delete the goods and/or services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Specifically, the wording “industrial oils and greases,” in Class 4, is unacceptable because it is too broad.  Applicant needs to further specify the nature of the oils and greases for industrial use, e.g., “mineral,” “non-mineral,” “lubricating.”

 

In addition, the wording “lubricants,” in Class 4, is unacceptable because it is too broad.  Applicant needs to specify the particular intended use for the lubricants, e.g., “for land vehicles,” “for industrial machinery.”

 

Next, the wording “fuels (including motor spirit),” in Class 4, is unacceptable because it contains parentheses.  Generally, parentheses and brackets should not be used in identifications; parenthetical information is permitted in identifications only 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 of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.  Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. 

 

Next, the wording “illuminants,” in Class 4, is unacceptable because it is too broad.  Applicant needs to specifically identify its goods in commerce, e.g., “lighter fluid,” “candles for lighting.”

 

Next, the wording “fuel stabilizers… for vehicles,” in Class 4, is unacceptable because it may encompass goods properly classified in more than one international class.  Specifically, “fuel stabilizers in the nature of chemical additives for vehicles” are goods properly classified in Class 1; however, “fuel stabilizers in the nature of non-chemical additives for vehicles” are properly classified in Class 4, as applicant has proposed, and simply need to be so identified.  Applicant is therefore required to classify and identify the goods appropriately.

 

Next, the wording “clothing,” which appears twice in Class 25, is unacceptable because it is too broad.  Applicant needs to specifically identify the items of clothing it offers in commerce, e.g., “shirts,” “pants,” “dresses.”

 

Next, the wording “headgear,” in Class 25, is unacceptable because it may encompass goods properly classified in more than one international class.  Specifically, headgear in the nature of headwear such as hats and caps is properly classified in Class 25, as applicant has proposed, and simply needs to be so identified.  However, protective headgear such as crash helmets and driving helmets is properly classified in Class 9.  Applicant is therefore required to properly classify and specifically identify its goods.

 

Next, the wording “education,” in Class 41, is unacceptable because it is too broad.  Educational services need to be identified by the particular nature of the service, e.g., “providing seminars,” “providing online classes,” as well as by the primary subject matter of the services, e.g., “in the field of go-cart driving safety,” “in the field of building go-carts.”  Applicant therefore needs to so specifically identify its educational services.

 

Next, the wording “providing of training,” in Class 41, is unacceptable because it is too broad.  Educational services in the nature of training need to be identified by the primary subject matter of the services, e.g., “in the field of go-cart driving safety,” “in the field of building go-carts.”  Applicant therefore needs to so specifically identify its educational services.

 

Next, the wording “entertainment,” in Class 41, is unacceptable because it is too broad.  Entertainment services need to be identified by the particular nature of the service as well as its subject matter, e.g., “providing live entertainment in the nature of music concerts,” “providing facilities for vehicle racing competitions.”  Applicant therefore needs to so specifically identify its entertainment services.

 

Finally, the wording “sporting and cultural activities,” in Class 41, is unacceptable because it is too broad.  Entertainment services in the nature of sporting and cultural activities need to be identified by the particular nature of the service as well as its subject matter, e.g., “providing live entertainment in the nature of music concerts,” “providing personal appearances by sports celebrities.”  Applicant therefore needs to so specifically identify its entertainment services.

 

Applicant may adopt the following classification and identification of goods/services, if accurate:

 

Class 1:      (Based on 44(e)) Chemical additives in the nature of fuel stabilizers for vehicles

 

Class 4:      (Based on 44(e)) ______ {specify type, e.g., mineral, non-mineral, lubricating} industrial oils and greases; lubricants for ______ {specify, e.g., motor vehicles, industrial machinery}; fuels, namely, motor spirit; illuminants, namely,______ {specify, e.g., lighter fluid, candles for lighting}; lubricants, oils and greases for go-cart engines; non-chemical additives in the nature of fuel stabilizers, non-chemical motor oil additives and non-chemical fuel additives for vehicles; (Based on Intent to Use) oils and greases for go-cart engines

 

Class 9:      (Based on 44(e)) (Based on Intent to Use) Headgear, namely, ______ {specify, e.g., crash helmets, driving helmets}

 

Class 12:    (Based on 44(e)) Apparatus for locomotion by land, air or water namely, go-carts and structural parts therefor; go-cart engines and structural parts therefor; (Based on Intent to Use) go-cart engines and structural parts therefor

 

Class 25:    (Based on 44(e)) Clothing, namely, ______ {specify, e.g., shirts, pants, dresses}; footwear; headwear; racing overalls; gloves; (Based on Intent to Use) clothing, namely, _____ {specify, e.g., shirts, pants, dresses}

 

Class 41:    (Based on 44(e)) Education, namely, ______ {specify service, e.g., providing classes, providing seminars} in the field of ______ {specify, e.g., go-cart racing safety, go-cart construction}; providing of training in the field of ______ {specify, e.g., go-cart racing safety, go-cart construction}; entertainment, namely, providing ______ {specify service and subject matter, e.g., live music concerts, facilities for vehicle racing competitions}; sporting and cultural activities, namely, providing ______ {specify service and subject matter, e.g., live entertainment in the nature of music concerts, personal appearances by sports celebrities}; organization of sports competitions namely, go-cart racing; (Based on Intent to Use) organization of sports competitions namely, go-cart racing

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual 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.

 

 

Requirements for Multiple-Class Applications

 

For goods/services in those international classes based on use in commerce in a multiple-class application, an applicant must meet all the requirements below:

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)        DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)        STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimens of record are acceptable for International Classes 12, 25, and 41 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

For goods/services in those international classes based on a foreign registration under Trademark Act Section 44(e) in a multiple-class application, an applicant must meet all the requirements below:

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

Disclaimer Required

 

Applicant must disclaim the descriptive wording “CHALLENGE” for services in Class 41 apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., ___ F.3d ___, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); TMEP §§1213, 1213.03(a). 

 

Specifically, the attached dictionary evidence shows that CHALLENGE is a noun meaning a competition or contest.  Applicant’s specimen of use for Class 41 shows that the services specifically include competitions and/or contests in the nature of go-cart races.  The attached third-party registrations show that CHALLENGE is commonly used in commerce as a descriptive word identifying a contest of some kind, such as a race, football game, or spelling bee.  U.S. consumers would therefore perceive the word CHALLENGE in the mark as merely identifying the nature and/or subject matter of applicant’s Class 41 services.  CHALLENGE therefore needs to be disclaimed for services in that class, apart from the mark as a whole.

 

Applicant may submit the following standardized format for a disclaimer:

                       

No claim is made to the exclusive right to use “CHALLENGE” for services in Class 41 apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

Questions

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 

 

All relevant e-mail communications will be placed in the official application record; however, an e-mail will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/RM Eisinger/

Rebecca Miles Eisinger

Examining Attorney, Law Office 102

571-272-8845

rebecca.eisinger@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 11/1/2012 FOR

SERIAL NO. 85673121

 

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 11/1/2012 (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.