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.  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: 7/8/2019

 

 

 

 

 

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.  

 

This Office action is in response to applicant’s communication filed on June 12, 2019.

 

Applicant’s translation statement and amended identification of services in International Class 37 are accepted. Applicant’s proposed amended identifications in International Classes 9 and 36, however, are not accepted, as discussed below. Furthermore, upon further consideration, the examining attorney makes the below-referenced additional requirement concerning the identification of services in International Class 39. The Office apologizes for any inconvenience this may cause. In addition, applicant’s consent agreement is not accepted, as also discussed below.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s chassis, steering wheels, shock absorbers, brakes, wheels, seats, anti-theft alarms, back-up warning alarms, fitted seat covers, seat headrests, windshield wipers, torsion bars, fuel tank filler caps, bumper stoppers, ski racks, doors, sunroofs and windows, and includes duplicate entries for “steering wheels.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  Vehicles, namely, cars, trucks, vans, motor scooters, mopeds, bicycles, electric bicycles and motorcycles; engines for land vehicles, gearboxes for land vehicles, body in the nature of structural parts for land vehicles, vehicle chassis, vehicle steering wheels, shock absorbers for automobiles, transmission mechanisms for land vehicles, brakes for vehicles, vehicle wheels, wheel rims, wheel covers, vehicle seats, anti-theft alarms for vehicles, back-up warning alarms for vehicles, fitted vehicle seat covers, vehicle seat headrests, rear-view mirrors, steering wheels, windshield wipers for vehicles, torsion bars for vehicles, vehicle fuel tank filler caps, automobile bumper stoppers guards, tow trailer hitches, rack trunk bags for bicycles and motorcycles, ski racks for vehicles, side window deflectors, doors for vehicles, automobile sunroofs, vehicle windows.

 

IDENTIFICATION OF SERVICES

 

The identification of services in International Class 36 is indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s credit and leasing services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  Banking and financial services, namely, loan services; credit and leasing services in the nature of {indicate specific nature of services}, hire purchase financing services; underwriting insurances for vehicles; underwriting life insurances; underwriting accident insurances; underwriting accidental death insurance; insurance brokerage; consultation, information and advice in matters of insurances; credit card payment processing services and other means of electronic payments processing through prepaid cards used for the purchase of fuels and lubricants, for the performance of maintenance and repair of vehicles; arranging of financial loans, financial services in the domain of leasing and rental of vehicles, namely, vehicle rental financing, financial guarantee services being sureties for vehicles; arranging of financial loans for the repair of vehicles; third-party extended warranty services for vehicles.

 

The identification of services in International Class 39 is indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s vehicle replacement services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  Transportation, namely, vehicle renting services, vehicle loaning or replacement in the nature of loaner car services, assistance in case of breakdown of vehicles in the nature of towing, rental of garages and parking spaces.

 

Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

In its response to the Section 2(d) refusal, applicant has submitted a consent agreement “signed by Peugeot Automobiles S.A. (a/k/a PSA Automobiles), formerly known as Peugeot Citroën Automobiles SA (‘Registrant’), the owner of Reg. No. 4,333,233.”

 

There is no record in the Office’s database showing that registrant Peugeot Citroën Automobiles SA has assigned the cited mark or changed its name to Peugeot Automobiles S.A. (a/k/a PSA Automobiles). Accordingly, applicant’s consent agreement cannot be accepted as sufficient to overcome the Section 2(d) refusal.

 

RESPONSE TO OFFICE ACTION 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Barney L. Charlon/

Trademark Examining Attorney

Law Office 104

(571) 272-9141

(571) 272-9104 (fax)

barney.charlon@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 7/8/2019 FOR U.S. APPLICATION SERIAL NO. 88099662

 

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 7/8/2019 (or sooner if specified in the Office action).  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.  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 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.