To: | 9154-3157 Quebec Inc. (dwtrademarks@dickinsonwright.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87178167 - RMSTATOR - 65552.7 |
Sent: | 1/3/2017 10:39:22 AM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87178167
MARK: RMSTATOR
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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: 9154-3157 Quebec Inc.
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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: 1/3/2017
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, 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE RECORDS
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).
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
· Requirement to Perfect Section 44(e) Basis
· Requirement for Acceptable Identification and Classification of Services
· Requirement for Compliance With Multiple-Class Application Requirements
· Requirement for Disclaimer
· Requirement for Meaning/Significance of Mark
· Requirement for Clarified Color Claim Statement
· Requirement for Complete Color Description Statement
REQUIREMENT TO PERFECT SECTION 44(e) BASIS
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION & CLASSIFICATION OF SERVICES
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade. Additionally, the services are classified incorrectly. Applicant must amend the application to properly classify the services. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Specifically, the following wording is unacceptable:
Manufacture and sale of parts and electrical accessories for motorized sport (powersport) vehicles, namely: stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches – This wording must be amended to clarify the nature of the services; additionally, such services must be properly classified. Specifically, with regard to “manufacture of” services, such wording does not identify a service within the meaning of the Trademark Act since the manufacturing of one’s own goods is not a registrable service rendered for the benefit of others. See TMEP §§1301.01(a)(ii), 1402.11. To be a registrable service, an activity must be performed primarily for the benefit of someone other than the applicant. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970). Therefore, applicant must amend this word to specify that the manufacturing services are “custom manufacturing of,” or “manufacture services for others in the field of” or “contract manufacturing of,” and in each case, indicate the goods being manufactured with specificity. Moreover, such services are in class 40, rather than class 35. Similarly, the wording “sale of” does not identify a service within the meaning of the Trademark Act. “Sales” or “selling” normally refers to selling one’s own goods or services and thus, is not a registrable service rendered for the benefit of others. See TMEP §§1301.01(a)(ii), 1402.11. Accordingly, the wording “sale of” must be amended to identify the type of services with greater specificity; e.g., “retail store services,” “wholesale distributorships featuring,” and “on-line wholesale and retail store services,” and indicate the type of goods or services featured. Additionally, colons should not be used in an identification of goods or services. TMEP §1402.01(a). Thus, applicant must further amend the identification to change the colon to a comma. Finally, the wording must be amended to remove the parentheses and incorporate the parenthetical information into the description since parentheses are generally not permitted 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.
Class 35:
Manufacture and sale of Online retail store services featuring parts and electrical
accessories for motorized sport (powersport) or powersport vehicles, namely: namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits,
starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition
wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches
Class 40:
Custom manufacturing of parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:
(1) List the 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 fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. 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.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 44 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.
REQUIREMENT FOR A DISCLAIMER
From applicant’s own identification of services, it is clear that the services feature “stators,” thus, the term STATOR merely describes a feature of those 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 “STATOR” 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.
REQUIREMENT TO INDICATE MEANING/SIGNIFICANCE OF MARK
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
REQUIREMENT FOR CLARIFIED COLOR CLAIM STATEMENT
Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
REQUIREMENT FOR COMPLETE COLOR DESCRIPTION STATEMENT
If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
If the color white is not claimed as a feature of the mark, the following mark description is suggested, if accurate:
The mark consists of the stylized wording “RMSTATOR” with “RM” in red, and “STATOR” in black, with the letter “O” consisting of three horizontal lines on either side and with a lightning bolt in red in the center of the “O” and an ignition wire extending from the top of the “O” to the top of the “R”.
If the color white is claimed as a feature of the mark, the following mark description is suggested, if accurate:
The mark consists of the stylized wording “RMSTATOR” with “RM” in red, and “STATOR” in black, with the letter “O” consisting of three horizontal white lines on either side and with a lightning bolt in red in the center of the “O” and an ignition wire extending from the top of the “O” to the top of the “R”.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Susan K. Lawrence/
Susan K. Lawrence
Trademark Examining Attorney
Law Office 116, USPTO
571-272-9186
sue.lawrence@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.