Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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. 

 

 

Issue date:  March 28, 2020

 

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 that the Applicant Must Address

 

1)      Amended Identification of Goods and Services is Required

2)      Requirements for a Multiple-Class Application

3)      Earlier-Filed Pending Application

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES IS REQUIRED

 

A.    International Class 7

 

The wording “propulsion mechanisms, other than for land vehicles” in the identification of goods is indefinite and must be clarified because the exact nature of these goods remains unknown.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “propulsion mechanisms, other than for land vehicles, namely, {please specify the common commercial names of the goods, i.e., electric motors, engines}.” 

 

B.     International Class 9

 

The wording “levelling instruments” in the identification of goods is indefinite and must be clarified because the exact nature of these goods remains unknown.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “levelling instruments, namely, {please specify the common commercial names of the goods, i.e., level indicators, plumb levels, surveyors’ levels}.” 

 

The wording “navigational instruments” in the identification of goods is indefinite and must be clarified because the exact nature of these goods remains unknown.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “electric navigational instruments,” “navigational instruments for vehicles,” “navigational buoys,” “GPS navigation device,” and/or “satellite-aided navigation systems.”

 

The wording “satellite navigational apparatus” in the identification of goods is indefinite and must be clarified because the exact nature of these goods remains unknown.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “satellite navigational apparatus, namely, global positioning system (GPS).”

 

C.     International Class 12

 

The wording “Aeronautical apparatus, machines and appliances” in the identification of goods is indefinite and must be clarified because the common commercial names of these goods must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “aeronautical apparatus, machines and appliances, namely, {please specify the common commercial names of these goods, i.e., aeroplanes, airplanes, propeller airplanes, structural parts for airplanes).”

 

The wording “air vehicles” in the identification of goods is indefinite and must be clarified because the common commercial names of these goods must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  For instance, the applicant may identify these goods as “air vehicles, namely, {please specify the common commercial names of these goods, i.e., aeroplanes, airplanes, propeller airplanes, hot air balloons).”

 

The wording “seat covers for vehicles” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “fitted seat covers for vehicles” in International Class 12 and/or “unfitted fabric covers for vehicle seats” in International Class 24.

 

D.    International Class 39

 

The wording “Travel reservation” in the identification of services for must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “travel ticket reservation service” in International Class 39 and/or “reservation of hotel rooms for travellers” in International Class 43.

 

E.     International Class 43

 

The wording “Hotel reservations” in the identification of services is indefinite and must be clarified because additional information is required about these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these services may be identified as “reservation of hotel rooms for travellers” and/or “making hotel reservations for others.”

 

The applicant may adopt the following amended identification of goods and services, if accurate:

 

International Class 7:  Aeronautical engines; Aeroplane engines; Injectors for engines; Jet engines, other than for land vehicles; propulsion mechanisms, other than for land vehicles, namely, {please specify the common commercial names of the goods, i.e., electric motors, engines}; Turbines, other than for land vehicles.

 

International Class 9:  Altimeters; Anemometers; Azimuth instruments; Barometers; Camcorders; Directional compasses; Distance measuring apparatus; Distance recording apparatus; Height measuring instruments; Levelling instruments, namely, {please specify the common commercial names of the goods, i.e., level indicators, plumb levels, surveyors’ levels}; Electric navigational instruments; Telemeters; Satellite navigational apparatus, namely, global positioning system (GPS); Inclinometers; Temperature indicators; Theodolites; Thermal imaging cameras; Viewfinders, photographic.

 

International Class 12:  Aerial conveyors; Aeronautical apparatus, machines and appliances, namely, {please specify the common commercial names of these goods, i.e., aeroplanes, airplanes, propeller airplanes, structural parts for airplanes); Aeroplanes; Air vehicles, namely, {please specify the common commercial names of these goods, i.e., aeroplanes, airplanes, propeller airplanes, hot air balloons); Helicopters; Safety belts for vehicle seats; Fitted seat covers for vehicles.

 

International Class 39:  Air transport; Aircraft rental; Rental of aircraft engines; Booking of seats for travel; Chauffeur services; Escorting of travellers; Freighting; Rental of navigational systems; Passenger transport; Arranging of passenger transportation services for others via an online application; Piloting; Transport services for sightseeing tours; Transport of travellers; Arranging of transportation for travel tours; Travel ticket reservation service.

 

International Class 43:  Boarding house bookings; Café services; Cafeteria services; Reservation of hotel rooms for travellers.

 

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.

 

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).

 

REQUIREMENTS FOR A MULTIPLE-CLASS APPLICATION

 

If the applicant identifies goods and/or services in additional international classes, the applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 may be classified in 6 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es).  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

EARLIER-FILED PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88530319 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

RESPONSE TO OFFICE ACTION

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 28, 2020 for

U.S. Trademark Application Serial No. 88750878

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 28, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”