To: | Dealer Tire, LLC (trademark@beneschlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86374730 - TIRE TRIGGER - 26213-00195 |
Sent: | 12/15/2014 8:47:58 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86374730
MARK: TIRE TRIGGER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Dealer Tire, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 12/15/2014
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.
Search Clause
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Identification of Goods/Services
Applicant may adopt the following identification, if accurate:
International Class 9; Computer application software for mobile phones, mobile devices, portable media players, handheld computers, handheld electronic devices, and personal computers, namely, software for use in diagnosing automotive problems and maintenance issues, in predicting replacement, repair and maintenance needs for automotive tires, parts and accessories, in identifying replacement, repair and maintenance options and recommendations for automotive tires, parts and accessories, in providing notifications concerning replacement, repair and maintenance needs for automotive tires, parts and accessories, in providing consumers information concerning promotional offers, options, recommendations and advertisements in the field of automotive tires, parts and accessories, in configuring, monitoring, and displaying pricing and selling tools for automotive tires, parts, and accessories, in estimating installation, replacement, repair and maintenance costs for automotive tires, parts and accessories, in helping consumers identify, inspect, select and purchase automotive tires, parts and accessories, in identifying automotive service providers, and in scheduling appointments for the installation, replacement, repair and maintenance of automotive tires, parts and accessories; Automated systems comprised of software used to monitor and provide predictions, notifications, recommendations, options, information, promotional offers and advertisements concerning automotive tires, parts and accessories; Authentication software for controlling access to and communications with computers;
International Class 35; Providing notifications, recommendations, information, promotional offers and advertisements for others in the field of automotive tires, parts and accessories (this item is indefinite and broad; the applicant must provide the common commercial name of the service); Business marketing consulting services in the field of automotive tires, parts, and accessories; Advertising, marketing, and promotion services; Providing on-line business information of others, namely, advertisements and solicitations; Providing pricing information about the goods and services of others via the global computer network; On-line retail store services featuring a variety of goods of others in the automotive field; Computerized on-line ordering services in the field of automotive tires, parts, and accessories for others; Online distributorship services in the field of automotive tires, parts, and accessories; Online retail services through direct solicitation directed to end-users in the field of automotive tires, parts, and accessories; Providing a searchable database featuring automotive and/or tire information for consumers in the field of automotive tires, parts, and accessories; Appointment scheduling services for the installation, replacement, repair and maintenance of automotive tires, parts, and accessories for others via the internet or other communications networks;
International Class 37; acceptable; AND,
International Class 42; Providing temporary use of online non-downloadable software for use in diagnosing automotive problems and maintenance issues, in predicting replacement, repair and maintenance needs for automotive tires, parts and accessories, in identifying replacement, repair and maintenance options and recommendations for automotive tires, parts and accessories, in providing notifications concerning replacement, repair and maintenance needs for automotive tires, parts and accessories, in providing consumers information concerning promotional offers, options, recommendations and advertisements in the field of automotive tires, parts and accessories, in configuring, monitoring, and displaying pricing and selling tools for automotive tires, parts, and accessories, in estimating installation, replacement, repair and maintenance costs for automotive tires, parts and accessories, in helping consumers identify, inspect, select and purchase automotive tires, parts and accessories, in identifying automotive service providers, and in scheduling appointments for the installation, replacement, repair and maintenance of automotive tires, parts and accessories; Providing temporary use of online nondownloadable authentication software for controlling access to and communications with computers.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Disclaimer Required
Applicant must disclaim the wording “TIRE” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 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)); TMEP §§1213, 1213.03(a).
The applicant’s goods and services are used for automotive repair, including tires. Therefore, the wording merely describes a feature or characteristic of the subject goods and services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “TIRE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Response Guidelines
/MatthewCKline/
Trademark Examining Attorney
Law Office 103
(571) 272-9454
matthew.kline@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.