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: 5/1/2019

 

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.

 

SUMMARY OF ISSUES:

 

• Identification of Services Must be Amended
• Partial Abandonment - Advisory

 

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).

 

IDENTIFICATION OF SERVICES

 

The word “parts” in the identification of goods in International Class(es) 12 must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class. 

 

However, while the word “parts” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods.  See TMEP §1402.03(a). 

 

For examples of acceptable identifications for parts, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

For the reasons set forth below, the identification of services needs clarification because it is, in part, indefinite.  TMEP §1402.01.  The portion of the identification that is unacceptable is in bold below with the explanation and/or suggestion in brackets.  The remainder of the identification is acceptable.

 

International Class 12:

 

Vehicles [the specific types of these goods must be listed, the following is suggested: Vehicles, namely, {indicate type, e.g., land vehicles}]; motor vehicles [the specific types of these goods must be listed, the following is suggested: motor vehicles, namely, {indicate type, e.g., automobiles}]; apparatus for locomotion by land, air and/or water [the specific types of these goods must be listed, the following is suggested: apparatus for locomotion by land, air and/or water, namely, {indicate type, e.g., automobiles, boats, etc.}]; motor land vehicles; land vehicles; off-road vehicles; ATVs; driverless motor vehicles [the specific types of these goods must be listed, the following is suggested: driverless motor vehicles, namely, {indicate type, e.g., automobiles}]; autonomous motor vehicles [the specific types of these goods must be listed, the following is suggested: autonomous motor vehicles, namely, {indicate type, e.g., automobiles}]; racing cars; reconditioned classic vehicles [the specific types of these goods must be listed, the following is suggested: reconditioned classic vehicles, namely, {indicate type, e.g., automobiles}]; vehicles sold in kit form [the specific types of these goods must be listed, the following is suggested: automobiles sold in kit form]; commercial vehicles [the specific types of these goods must be listed, the following is suggested: commercial vehicles, namely, {indicate types, e.g., trucks}]; motor vehicles not powered by combustion [the specific types of these goods must be listed, the following is suggested: motor vehicles not powered by combustion, namely, {indicate types, e.g., automobiles}]; electric vehicles [the specific types of these goods must be listed, the following is suggested: electric vehicles, namely, {indicate types, e.g., automobiles}]; hybrid vehicles [the specific types of these goods must be listed, the following is suggested: hybrid vehicles, namely, {indicate types, e.g., automobiles}]; military vehicles [the specific types of these goods must be listed, the following is suggested: military vehicles for transport]; vehicles for use by emergency services, search and rescue services [the specific types of these goods must be listed, the following is suggested: vehicles for use by emergency services, search and rescue services, namely, {indicate types, e.g., ambulances}]; powertrains for land vehicles; engines for land vehicles; motors for land vehicles; engines for motorcycles; motors for motorcycles; engines for bicycles; motors for bicycles; engines for racing cars; vehicles equipped to cook and sell food [the specific types of these goods must be listed, the following is suggested: vehicles equipped to cook and sell food, namely, trucks}]; trailers; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; wing mirror protective and vanity covers [the specific types of these goods must be listed, the following is suggested: car wing mirror protective and vanity covers]; car seat covers [fitted car seat covers]; covers for vehicle steering wheels; fitted covers for vehicles; wheels for vehicles; alloy wheels [alloy wheels for vehicles]; wheel trims [vehicle wheel trims]; wheel rims; spare wheels [spare vehicle wheels]; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; tyres; automobile tyres, bicycle tyres; inner tubes for tyres; puncture repair outfits for bicycle tires [the specific types of these goods must be listed, the following is suggested: puncture repair patches for bicycle tires]; spoilers for vehicles; covers for vehicles [fitted covers for vehicles]; seats for vehicles; safety seats for vehicles; safety belts for vehicles [safety belts for vehicle seats]; safety harnesses for vehicles [safety harnesses for vehicle seats]; safety signals for vehicles [the specific types of these goods must be listed, the following is suggested: safety directional signals for vehicles]; anti-theft, security and safety devices and equipment for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; doors for vehicles; vehicle windows; vehicle windshields; window glass for vehicle and windshields; roof windows for vehicles; skylight windows for vehicles; vehicle bumpers; vehicle centre consoles sold as parts of vehicles and which incorporate electronic interfaces; tricycles [the specific types of these goods must be listed, the following is suggested: tricycles not being toys]; parts, fittings and accessories for bicycles [replacement parts, fittings and accessories for bicycles]; hover boards [the specific types of these goods must be listed, the following is suggested: hover boards being motorized land vehicles]; scooters [the specific types of these goods must be listed, the following is suggested: motor scooters]; quadricycles; motorised unicycles; bicycles; children's bicycles; balance bikes; go-karts; strollers and prams, and their parts and accessories [the specific types of these goods must be listed, the following is suggested: strollers and prams, and their replacement parts and accessories, namely, {indicate types of accessories, e.g., covers for baby strollers}]; baby, infant and child seats for vehicles [the specific types of these goods must be listed, the following is suggested: baby, infant and child safety seats for vehicles]; sun blinds, roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for vehicles [sun blinds, roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for land vehicles]; aircraft; space vehicles; drones; unmanned aerial vehicles; personal air vehicles; parachutes; hovercraft; underwater vehicles; jet vehicles for water sports; remote control vehicles, not toys [the specific types of these goods must be listed, the following is suggested: remote control land vehicles, not toys]; parts and fittings for all of the aforesaid goods [replacement parts and fittings for all of the aforesaid goods]

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 12 will be deleted from the application:  Vehicles; motor vehicles; apparatus for locomotion by land, air and/or water; driverless motor vehicles; autonomous motor vehicles; reconditioned classic vehicles; vehicles sold in kit form; commercial vehicles; motor vehicles not powered by combustion; electric vehicles; hybrid vehicles; military vehicles; vehicles for use by emergency services, search and rescue services; vehicles equipped to cook and sell food; wing mirror protective and vanity covers; car seat covers; alloy wheels; wheel trims; spare wheels; puncture repair outfits for bicycle tires; covers for vehicles; safety belts for vehicles; safety harnesses for vehicles; safety signals for vehicles; tricycles; parts, fittings and accessories for bicycles; hover boards; scooters; strollers and prams, and their parts and accessories; baby, infant and child seats for vehicles; sun blinds, roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for vehicles; remote control vehicles, not toys; parts and fittings for all of the aforesaid goods. 

 

The application will then proceed with the following goods and/or services in International Class(es) 12 only:  motor land vehicles; land vehicles; off-road vehicles; ATVs; racing cars; powertrains for land vehicles; engines for land vehicles; motors for land vehicles; engines for motorcycles; motors for motorcycles; engines for bicycles; motors for bicycles; engines for racing cars; trailers; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; covers for vehicle steering wheels; fitted covers for vehicles; wheels for vehicles; wheel rims; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; tyres; automobile tyres, bicycle tyres; inner tubes for tyres; spoilers for vehicles; seats for vehicles; safety seats for vehicles; anti-theft, security and safety devices and equipment for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; doors for vehicles; vehicle windows; vehicle windshields; window glass for vehicle and windshields; roof windows for vehicles; skylight windows for vehicles; vehicle bumpers; vehicle centre consoles sold as parts of vehicles and which incorporate electronic interfaces; quadricycles; motorised unicycles; bicycles; children's bicycles; balance bikes; go-karts; aircraft; space vehicles; drones; unmanned aerial vehicles; personal air vehicles; parachutes; hovercraft; underwater vehicles; jet vehicles for water sports.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

 

 

/Jonathan Falk/

Jonathan R. Falk

Trademark Examining Attorney

Law Office 111

(571)272-5301

Jonathan.falk@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 5/1/2019 FOR U.S. APPLICATION SERIAL NO. 88372810

 

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 5/1/2019 (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.