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: 9/1/2014

 

 

 

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

 

SUPPLEMENTAL SEARCH ADVISORY

 

Please note that the proposed mark has been fully searched in International Classes 7, 12 and 25 only. An additional search of Office records may be conducted and additional issues raised upon receipt of an acceptable identification and classification of goods.

 

PRIOR PENDING APPLICATIONS – INTERNATIONAL CLASS 25

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark in International Class 25.

 

The filing dates of pending U.S. Application Serial Nos.  85030677; 85481839; 86172913; 86172932 and 86274036 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration in International Class 25 under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

PRIOR REGISTRATION OWNED BY APPLICANT

 

If applicant owns U.S. Registration No. 3757399, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No. 3757399.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  In addition, the goods fall in at least four classes. Accordingly, the applicant must amend the application to properly classify the gods and either limit the application to goods falling in three classes or add classes to 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 following wording in International Class 12 is either indefinite and/or has been misclassified:

 

The wording “aftermarket automobile accessories, namely, tow hooks, tow straps, slope boxes, hood pins, fender washer kits, license plate frames, and mini license plates” is indefinite and encompasses goods in at least two classes. Specifically, “novelty metal mini license plates” are classified in International Class 6 and “novelty plastic mini license plates” are classified in International Class 20. The proper classification for “tow straps” is International Class 22. The “slope boxes” and “fender washer kits” will be classified by the form of the goods. Note that “metal washers for vehicle fenders” will be classified in International Class 6.

 

The wording “safety harnesses, seatbelt harness bars” in “racing and performance after-market automobile interior parts, namely, interior mirrors, seats, seatbelts, safety harnesses, seatbelt harness bars, shift knobs, hand brake handles, pedal pads, and floor mats” is indefinite and may have been misclassified. The proper class for “safety harnesses and harness bars for auto racing” would be classified in International Class 9, but “seat safety harness and harness bars for motor cars” would remain in International Class 12.

 

In addition, the applicant must specify the use of the “interior mirrors” in the wording “racing and performance after-market automobile interior parts, namely, interior mirrors, seats, seatbelts, safety harnesses, seatbelt harness bars, shift knobs, hand brake handles, pedal pads, and floor mats.”

 

The wording “floor mats” in the wording “racing and performance after-market automobile interior parts, namely, interior mirrors, seats, seatbelts, safety harnesses, seatbelt harness bars, shift knobs, hand brake handles, pedal pads, and floor mats” has been misclassified. The proper classification for “racing and performance after-market automobile interior parts, namely, floor mats” is International Class 27.

 

The wording “suspension systems and parts for suspension systems for vehicles” is indefinite. The applicant must specify the type of vehicle with which the goods are used. In addition, the applicant must identify the individual “parts” by their common commercial or generic names.

 

The wording “exhaust shields” in “vehicle parts, namely, side mirrors and exhaust shields” is indefinite. The applicant must specify the form of the “shields” in order to determine proper classification.

 

The applicant may adopt the following format for the identification, if accurate:    

 

“aftermarket automobile accessories in the nature of slope boxes, namely, _____________ [describe nature and use of goods],” [international class determined by nature and use of goods];

 

“aftermarket automobile accessories, namely, kits comprised of metal washers for fenders and novelty metal miniature license plates,” in International Class 6;

 

“engine mufflers; mechanical engine parts for land vehicles,” in International Class 7;

 

“aftermarket automobile accessories, namely, tow hooks, hood pins, and license plate frames; automotive interior trim; lug nuts for vehicle wheels; racing and performance after-market automobile interior parts, namely, interior rear view mirrors, seats, seatbelts, seat safety harnesses and harness bars, shift knobs, hand brake handles, pedal pads; spoilers for vehicles; steering wheels for vessels; steering wheels for vehicles and accessories therefor, namely, quick-release mechanisms for steering wheels, short hub adapters for use with quick-release mechanisms for steering wheels, anti-theft devices for use with quick-release mechanisms for steering wheels, and quick tilt steering wheel systems; structural parts for automobiles, namely, hoods, interior deck lids, and roofs; suspension systems for automobiles and parts for suspension systems for automobiles, namely, _____________ [list individual parts, e.g., ‘coil springs, equalizers and sway bars’]; vehicle parts, namely, side mirrors and exhaust shields; vehicle wheel rim protectors,” in International Class 12;

 

“aftermarket automobile accessories, namely, novelty miniature plastic license plates,” in International Class 20;

 

“aftermarket automobile accessories, namely, tow straps,” in International Class 22;

 

“hats; hooded sweatshirts; T-shirts,” in International Class 25;

 

“racing and performance after-market automobile interior parts, namely, floor mats,” in International Class 27.

 

Additions Not Allowed:  An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

On-line Acceptable Identification of Goods and Services Manual:  For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:

 

http://tess2.gov.uspto.report/netahtml/tidm.html

 

The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services.  While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.

 

(4)       Submit a specimen for each international class.  As further discussed below the current specimens are not acceptable for any international classes. 

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” 

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN

 

Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Specifically, the specimen displays the mark with a space created by a design between the “R” and “G”, i.e., as “NR G”; however, the drawing displays the mark as “NRG”. 

 

The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods, as shown by the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a).  Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods and/or services.  See TMEP §807.12(a). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods may include tags, labels, instruction manuals, containers, and 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.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)  Submit a new drawing of the mark that agrees with the mark on the specimen and, if appropriate, an amendment to the color claim and/or mark description that conforms to the new drawing. 

 

(2)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark or a substantially exact representation of the mark in the drawing in actual use in commerce for the goods identified in the application.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3.jsp.

 

ACCEPTABLE SPECIMEN OF USE REQUIRED – CLASS 7

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 7.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Specifically, the goods in International Class 7 are identified as engine mufflers and engine parts, but the specimen of use is described as a “power steering tank.”

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods may include tags, labels, instruction manuals, containers, and 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.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application.

 

(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

RESPONDING TO THE INSTANT OFFICE ACTION

 

If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at the following address:

 

http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp.

 

The applicant can email technical questions to TEAS@uspto.gov.

 

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 communication 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.

 

 

 

/Martha L. Fromm/

Examining Attorney

Law Office 106

(571) 272-9320

Martha.Fromm@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/1/2014 FOR U.S. APPLICATION SERIAL NO. 86277158

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 9/1/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.