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: 2/5/2019

 

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 OF OFFICE’S DATABASE OF MARKS

 

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:

 

• Identification of Goods & Services
• Multiple Class Advisory
• Description of the Mark
• Foreign Registration Required (Class 37)

 

 

IDENTIFICATION OF GOODS & SERVICES

 

Some of the wording in the identification of goods and services is indefinite and must be clarified because applicant must specify the nature of the goods and services, better describe what the goods and services are or how they function, or must clarify inconsistencies in the identification of the goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 12 for “shock absorbers for automobiles”, “engines for land vehicles”, “cover for vehicles”, “vehicle exhaust” and “rubber part used as protection of the air bag in the process of reforming tires”.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Additionally, applicant has classified the following goods and/or services in International Class 12:  “Discharge pipe for vehicle; Converter catalytic to automobile; Oil and fuel filter for vehicles; Silencers for vehicles; Spark plugs for cars.”  However, the proper classification is International Class 7. 

 

Additionally, applicant has provided the application fee for only 3 international classes.  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international classes for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Finally, several goods and services, including the services in International Class 35, are not readily clear from the wording used in the identification. The trademark examining attorney has attempted to supply suggested alternative wording where possible.

 

Applicant may substitute the following wording, with changes in bold, if accurate: 

 

 

Class 7:          “Discharge pipe in the nature of exhaust pipes for vehicle; Catalytic converter units for vehicle exhausts Converter catalytic to automobile; Oil and fuel filter for vehicles; Silencers in the nature of mufflers for vehicles; Spark plugs for cars”

 

Class 12:         “Cigarette lighters for automobiles; Automobile safety devices, namely, Airbags; Anti theft alarm for vehicles; Reverse gear alarms for vehicles; Ambulances; Shock absorbers for automobiles; Shock absorbers for suspension of vehicles; Wheel axle rings for vehicles; Anti obfuscating devices for vehicles in the nature of {specify nature of goods – as worded the goods are indefinite}; Anti-theft devices for vehicles; Head restraints for vehicle seats; Rims for vehicle wheels; Child safety seats for vehicles; Seats for vehicles; Trailer tow bar for vehicles; Automobiles; Treadmill to retread vehicle tires; Crankshafts for land vehicles, except engine parts; Vehicle accessories, namely, air pumps; Honks Horns for vehicles; Gearboxes for land vehicles; Vehicle wheel caps; Trucks; Covers for steppes in the nature of {specify nature of goods – unclear as worded}; Covers for steering wheels of vehicles; Car hoods; Motor vehicle hoods; Vehicle hoods; Bodyworks; Dump Trucks; tipping buckets trucks; Automotive bodies works; Cars; Sports cars; Motor vehicles, namely, {specify particular type, e.g., two-wheeled motor vehicles, four-wheeled motor vehicles, electrically-powered motor vehicles, etc.}; Cars for bicycles and tricycles not being toys; Car body parts except for engines, namely, {specify particular parts}; Car chassis; Vehicle chassis; Seat belts for vehicle seats; Hydraulic circuits for vehicles; Molded Fitted covers for vehicles; Counterweights for vehicle wheels; Torque converters for land vehicles; Non-slip chains for vehicles; Command chains for land vehicles; Transmission chains for land vehicles; Chains for {specify function} for use with cars; Anti-fog devices for vehicles, namely, {specify particular devices}; Transmission shafts for land vehicles; Axles for vehicle wheels; Drive shafts for land vehicles; Clutches for land vehicles; Stackers being {specify what stackers are}; Engines for land vehicles; Gearing for land vehicles; Reduction gears for land vehicles; Rearview mirrors; Car upholstery; Stirrups of for vehicles; Brakes for vehicles; Vehicles, namely, vans; Shaft spindles for vehicles; Windows for vehicles; Headlight cleaners being parts of vehicles; Windshield wipers; Canvas {specify particular goods, e.g., roofing for vehicles that is removable}, pneumatic; Brake linings for vehicles; Directional lights for vehicles; Propulsion mechanisms for land vehicles; Shock absorbing springs for vehicles; Suspension springs for vehicles; Traction motors for vehicles; Electric motors for land vehicles; Engines for land vehicles; Buses; Parts of land vehicles, namely, body lift panel; Automobile windshields; Vehicle bumpers; Shock absorbers for automobiles; Mudguards; Parasols adapted for cars; Brake pads for vehicles; Tires; Tires for vehicle wheels; Solid tires for wheels of land vehicles; Luggage rack for vehicles; Car skis in the nature of {specify what car skis are}; Doors for vehicles; Patches to repair tire tubes; Vehicle wheels; Free wheels for land vehicles; Bearings of cylinders for vehicles; Brake shoes for vehicles; Vehicles, namely, motor scooters; Brake segments for vehicles; Side cars; Spoilers for vehicles; Covers for gasoline tanks of vehicles; Trailers, caravan; Trailers; Transmissions for land vehicles; Tricks for rail vehicles in the nature of {specify what tricks are}; Turbines for land vehicles; Valves for vehicle tires; Dump vehicles, namely, {specify particular vehicles, e.g., dump trucks, etc.}; Vehicles of remote control except toy Remotely-operated vehicles not being toys, namely, {specify particular type of vehicles}; Electric vehicles, namely, {indicate specific type of vehicle}; Vehicles motorized for camping, namely, motor home; Flywheels for vehicles; Vehicle windowpane damper; Wheel rings for vehicles; Starting engines for land vehicles; Vehicle bench in the nature of {specify what vehicle benches are}; Air bladder of rubber for tire vulcanization for vehicles; Car blocker, safety in the nature of {specify what car blockers, safety are}; Brake rubber for land vehicles; Vehicle parts, namely, brakes; Rubber bushing for cars for {specify purpose of the rubber bushing}; Bucket trucks; Gear, vehicle component specify particular gear and/or purpose on vehicles; Fitted covers for vehicles; Truck wagons; Structural part of vehicles, namely, hose clips; Cover for vehicles; Vehicle commands; Land vehicle transmission belt; Vehicle current; Vehicle sealing device, namely, {specify nature of device}; Motor shaft for vehicles; Structural vehicles parts, namely, connection links; Waxed fitted vehicle covers; Vehicle parts, namely, electrical equipment for regulating rear-view mirrors; Vehicle exhaust; Vehicle {specify type, e.g., rear view, side view, etc.} mirror; Eccentric, piece of vehicle part of a machine that rotates around a point outside its geometric center and which, therefore, transforms a rotating movement into another of different nature; Structural vehicle parts, namely, switches for headlights and arrowturn signals for vehicle; Vehicle part, namely, patches for {specify, e.g., tires, etc.}; Vehicle parts, namely, electrical or mechanical actuator lifts for door windows of the glass of the door; Springs for safety locks of the hood of the automobile; Rubber part used as protection of the air bag in the process of reforming tires; Rubber part used to protect the bag of air in the process of reforming tires; Bicycle carrier for vehicles; Ski holder for vehicles; Security systems for vehicles; Automotive fiberglass and plastic spoilers; Part of vehicles, namely, brake drums; Electric vehicle, vehicle hood; Urban public transport vehicle, namely, trolley bussport vehicle; Vehicle glass, namely, glass windows for vehicles”

 

Class 35:         “Retail store services featuring {specify particular goods, e.g., vehicle lubricants, vehicle parts and accessories, etc.}; Automobile dealerships; Administration of the business affairs of franchises; Franchise services, namely, offering business management assistance in the establishment and operation of {indicate specific type of establishment being operated}Trade by any means of apparatus for locomotion by earth, air or water; Trade by any means of lubricants; Trade by any means of parts and parts of apparatus for locomotion by land, air or Water; Trade by any means of parts and components of vehicles; Trade by any means of vehicles; Sale and licensing of Franchising, in the case of business administration in franchising; Franchising company which has a registered trademark, the patented production or similar rights grants to other license or use of those marks or certain conditions business administration; Franchise management”

 

Class 37:         “Tire balancing; Upholstery repair; Vehicle washing; Vehicle cleaning; Lubrication of vehicles; Vehicle maintenance; car maintenance and repair; Vehicle polishing; Tire retreading; Reconditioning of worn or partially destroyed engines; Vehicle repair services; Maintenance services, namely, suppression of interference in electrical appliances; Antioxidant treatment services for vehicles; Vulcanization of tires, namely, repair thereof; Installation and repair of air conditioners; Installation and maintenance of electrical installations; Installation and maintenance of hydraulic installations; Vehicle diagnostic center services, car maintenance and repair services; Vehicle battery charging; Advice, advice and information on repair and maintenance of vehicles; Vehicle tire tube repair services; Car roof repair services; Vehicle dealer, vehicle repair and service; Vehicle stereo repair services; Car radio repair services; Conversion of vehicles to gasoline for natural gas; Installation of vehicle stereos; Installation and repair of air conditioning, including for vehicles; Vehicle alarm installation and repair services.”

 

 

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.

 

 

MULTIPLE CLASS ADVISORY

 

The application identifies goods and/or 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 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 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.

 

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).

 

See 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.

 

 

 

DESCRIPTION OF THE MARK

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of a red, white and black circle with a gray outer border inside of which appears a black lightning bolt design with a white outer border. At the right side of the design appears the wording DIGIPOWER in black stylized letters.

 

 

FOREIGN REGISTRATION REQUIRED (CLASS 37)

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

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).  

 

 

RESPONSE GUIDELINES

 

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. 

 

 

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.  

 

 

 

/Jason R. Nehmer/

Examining Attorney

Law Office 121

(571) 270-5303

jason.nehmer@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 2/5/2019 FOR U.S. APPLICATION SERIAL NO. 88169425

 

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 2/5/2019 (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.