To: | Central Florida Expressway Authority (jchoufani@allendyer.com) |
Subject: | U.S. Trademark Application Serial No. 88873127 - EXPRESSWAY AUTHORITY - 0113115.2 |
Sent: | October 02, 2020 03:17:46 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88873127
Mark: EXPRESSWAY AUTHORITY
|
|
Correspondence Address: ALLEN, DYER, DOPPELT & GILCHRIST, P.A. 255 SOUTH ORANGE AVENUE, STE. 1401
|
|
Applicant: Central Florida Expressway Authority
|
|
Reference/Docket No. 0113115.2
Correspondence Email Address: |
|
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: October 02, 2020
Upon further review, it has been determined that portions of the identification of services are unacceptable. The examining attorney apologizes for the failure to include this issue in the initial office action.
AMENDED IDENTIFICATION/CLASSIFICATION REQUIRED – CLASS 39
The wording “Operation of roads and tolled expressway systems” in the identification of services for International Class 39 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 expressway toll collection services in International Class 36 or business management of private roads and tolled expressway systems in International Class 35.
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 substitute the following wording, if accurate:
INTERNATIONAL CLASS 36: Road and expressway toll collection services.
MULTI-CLASS APPLICATION REQUIREMENTS
If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 36 and 37. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. The services are currently classified in International Classes 37 and 39.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 36 and 37. See more information about specimens.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Verna B. Ririe/
Trademark Examining Attorney
Law Office 104
(571) 272-9310
verna.ririe@uspto.gov
RESPONSE GUIDANCE