Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

Issue date:  October 07, 2021

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

In an attempt to avoid the likelihood of confusion refusal, the applicant has amended the identification of goods in International Class 12. However, the amendment does not obviate the likelihood of confusion.

The amended identification in International Class 12 is “Self-driving transport vehicles with visual alert systems in the nature of flashing lights for communicating with motorists and pedestrians; driverless cars with visual alert systems in the nature of flashing lights for communicating with motorists and pedestrians; transport vehicles, namely, autonomous vehicles for transport with visual alert systems in the nature of flashing lights for communicating with motorists and pedestrians; autonomous cars with visual alert systems in the nature of flashing lights for communicating with motorists and pedestrians; automatic steering for land vehicles; vehicle camera mount; none of the foregoing for use in connection with golf carts or low-speed electric vehicles.”

The cited registration identifies the following goods: “Land vehicles, namely, low-speed electric vehicles; Motorized golf carts.”

As the previously and currently attached Internet evidence illustrates, due to their nature, autonomous and self-driving vehicles are commonly low-speed electric vehicles. Therefore, the registrant’s goods identified as “land vehicles, namely, low-speed electric vehicles” encompass the applicant’s goods, and vice versa. While the applicant has tried to further limit its identification of goods by describing the visual alert systems, the evidence shows that autonomous and self-driving vehicles are designed to have such systems as their only way to communicate with pedestrians and other cars. As discussed above, autonomous and self-driving vehicles are often low-speed electric vehicles, thus, applicant’s additional specification of a particular feature of its vehicles does not remove them from being encompassed by the registrant’s identification of goods. Lastly, the exclusionary language “none of the foregoing for use in connection with golf carts or low-speed electric vehicles” does not obviate the relatedness of the goods. Specifically, as the evidence illustrates, self-driving and autonomous vehicles and low-speed electric vehicles have a similar function, purpose and use as transport vehicles.

Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated 04/16/21 are maintained and continued: 

• Section 2(d) Likelihood of Confusion Refusal as to Class 12 based on U.S. Registration No. 5471267

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

In addition, the following requirement(s) and/or refusal(s) made final in that Office action are satisfied: 

            • Amendment to the Identification of Goods and Services

See TMEP §§715.03(a)(ii)(B), 715.04(a).

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@uspto.gov

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on October 07, 2021 for

U.S. Trademark Application Serial No. 90022224

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. 

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@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 October 07, 2021, 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.”