To: | Formula One Licensing B.V. (nytrademarks@kilpatricktownsend.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88067367 - FORMULA 1 - 1100159 |
Sent: | 4/30/2019 11:54:30 AM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88067367
MARK: FORMULA 1
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CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Formula One Licensing B.V.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/30/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 12 April 2019.
In a previous Office action dated 18 October 2018, applicant was required to satisfy the following requirement: amend the identification of services.
Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issue below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUE MADE FINAL that applicant must address:
REQUIREMENT – AMEND IDENTIFICATION OF SERVICES
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.
Class 37: Building construction; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair of machinery for the oil industry; vehicle cleaning; drilling of wells; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials in the nature of vehicle repair and sports equipment repair; repair and maintenance of automobiles, tractor trailers, tractors, and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; construction, namely, construction supervision of industrial equipment, and repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; repair of tires by vulcanization
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Advisory – Response Guidelines
The application will then proceed for the following services: Building construction; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; vehicle cleaning; drilling of wells; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials in the nature of vehicle repair; repair and maintenance of automobiles, and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; repair of tires by vulcanization.
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 $125 per 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.
Assistance
/Joan Blazich/
Examining Attorney
Law Office 122
571-272-7810
joan.blazich@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.