Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90123714

DATE:                                03/15/2021

NAME:                               gswift

NOTE:         

 

 

From: Swift, Gilbert M.
Sent: Sunday, March 14, 2021 8:33 PM
To: GONZALEZ@THEGONZALEZLAWOFFICE.COM
Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: Response Requested: Trademark Application Serial No. 90123714—ENVO

 

RE: Trademark Application Serial No. 90123714—ENVO

 

Dear FELIX ARTURO GONZALEZ, Esq.:

 

I am the Trademark examining attorney assigned to the above-captioned application. Your correspondence of March 8, 2021 disposes of all refusals and requirements except for the requirement below. I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves this issue, which I have described below.  To provide authorization, you simply need to give it in a reply to this email. 

 

Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Final Office action with the Final Requirement. In any event, I hope you will let me know which course of action you prefer.

 

 

Final Requirement: Identification of Goods

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The relevant goods are:  “Electric scooter conversion kits for making structural changes to the scooter, namely, […] LCD Controller system, Geared hub motor” in Class 012.

 

This wording in the identification of goods needs clarification because it does not identify the goods with enough specificity.  See TMEP §§1402.01, 1402.03. 

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 012:            Vehicles, namely, electric delivery tricycles and cycles in the nature of bicycles, tricycles, ebikes and etrikes; Motor scooters; Mobility scooters; Motorized mobility scooters; Non-motorized push scooters; Motorized personal mobility scooters; Electrically-powered motor scooters; Motor scooters and structural parts therefor; Push scooters and structural parts therefor; Storage racks specially adapted for mobility scooters; Electric bicycles; Folding electric bicycles; Motorized bicycles; Mountain bicycles; Snowmobiles and structural parts therefor; Bicycles, namely mini bikes, bicycles with an auxiliary motor, electric bicycles, folding bikes, mopeds, electric mopeds, motorcycles, electric motorcycles, motorcycles with alternative power source; cars, cars with alternative power source, electric cars; electric motors for bicycles, bike accessories, namely, fitted bicycle covers, bicycle saddles; Electric scooter conversion kits for making structural changes to the scooter, namely, battery, [specify “LCD Controller system” by common commercial name] geared hub motors for land vehicles; Ski bikes; Snow bikes; Snow scooters; Self-propelled utility terrain vehicles (UTVs) for snow removal; Velomobile bodies, namely, specially adapted for weather protection shells for use on bicycles, scooters and adult tricycles; Self balancing electric scooters; Light aircraft; All-Terrain Land Vehicles (ATVs); Electrically-powered skateboards namely, electronically motorized skateboards; Wheelchairs; Adaptive mobility scooters; Self-driving mobility robots in the nature of robotic transport vehicles for indoor use; Water bikes; Kayaks; Boats; Recreational watercraft, namely, kayaks, canoes, paddleboards, pedal boats, fishing boats and dinghies; personal jet boats

 

TMEP §1402.01.

 

Advisories

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Please let me know how you wish to proceed. I thank you in advance for your prompt response.

 

Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028