United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88619416
Mark: SHINGLEBACK OFF ROAD
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Correspondence Address:
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Applicant: Taylor, Andrew
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Reference/Docket No. 01223
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
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).
Disclaimer Required
In this case, applicant must disclaim the wording “OFF ROAD” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the American Heritage Dictionary shows this wording “Existing, taking place, or designed for use off paved or public roads or in rugged terrain”. See http://www.ahdictionary.com/word/search.html?q=off-road. Further, the attached evidence from third party and informational websites shows that bike racks and carriers are frequently used or design to be used OFF ROAD. See http://www.popularmechanics.com/adventure/outdoors/g3146/best-bike-racks/; http://www.amazon.com/Black-Widow-Folding-Mounted-Off-Road/dp/B0106FADUU; http://www.roamoffroad.com/product/roam-jl-bike-carrier-rear-bumper-jeep-wrangler-jl-bike-carrier/; http://www.toyota-4runner.org/5th-gen-t4rs/244751-bike-racks-off-road-travel.html; http://forums.mtbr.com/cars-bike-racks/recommend-bike-rack-offroad-use-648935.html; http://www.overlandbound.com/forums/threads/off-road-worthy-bike-rack.8592/. Thus, the wording merely describes applicant’s goods because a feature of applicant’s racks and carriers is that they could be intended for OFF ROAD use.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “OFF ROAD” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Signature Required
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Identification of Goods
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
The wording “bars and other protective fittings specially adapted for use with vehicles (roo bars, bull bars, roll bars, roll cages)” in the identification of goods is indefinite and must be clarified because the types of bars and fittings must be specified by their common commercial name. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 12: bicycle carriers for vehicles; bicycle racks for vehicles, namely, bicycle carriers for vehicles; bicycle stands; carriers for cycles for use on vehicles; carriers for transporting cycles on vehicles; carrying racks for bicycles for use on vehicles; bars and protective fittings specially adapted for use with vehicles¸ namely, {specify the specific bars and fittings in Class 12, e.g., Land vehicle suspension parts, namely, torsion/sway bars, vehicle roll bars, Roof panels for land vehicles}; plastic fuel tanks for vehicles
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.
Citizenship Required
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action.
Carr, Patrick
/Patrick Carr/
Trademark Examining Attorney
Law Office 125
(571) 272-9634
patrick.carr@uspto.gov
RESPONSE GUIDANCE