To: | Ford Motor Company (tmdocket@ford.com) |
Subject: | U.S. Trademark Application Serial No. 90336160 - FORD BLUE ADVANTAGE - 84331974 |
Sent: | May 19, 2021 07:36:11 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90336160
Mark: FORD BLUE ADVANTAGE
|
|
Correspondence Address: |
|
Applicant: Ford Motor Company
|
|
Reference/Docket No. 84331974
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: May 19, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
However, applicant must respond to the issues below.
AMENDMENT TO THE IDENTIFICATION OF SERVICES REQUIRED
Particular wording in the identification of services is indefinite and too broad, and must be clarified for the reasons set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Generally, applicant must amend the problematic identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Specifically, the identification for “vehicle dealership services related to extended warranties on pre-owned vehicles sold exclusively through authorized automotive dealerships” is problematic because the primary nature of the services contemplated is unclear and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Dealership services and the administrative processing of warranties are classified in Class 35 while extended warranty services in the nature of service contracts are Class 36 services. Applicant must clarify the services contemplated and classify the services accordingly. Id.
Please note that if the applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
Applicant may substitute the following wording, if accurate:
Class 35: Dealership services in the field of certified pre-owned vehicles; vehicle dealership services, namely, processing warranty registration documentation for others related to extended warranties on pre-owned vehicles sold exclusively through authorized automotive dealerships; vehicle dealership services, namely, dealerships in the field of pre-owned motor and electric vehicles, vans, pick-up trucks and SUVs; retail dealership and wholesale distributorship services in the field of motor vehicles; and advertising, marketing and promotional services for automotive dealerships.
Class 36: Extended warranty services, namely, service contracts for vehicle dealerships on pre-owned vehicles sold exclusively through authorized automotive dealerships.
SCOPE ADVISORY: Applicant’s 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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
ASSISTANCE: For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For information on how to identify the services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class. 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.
CLARIFICATION WHETHER COLOR IS A FEATURE OF THE MARK REQUIRED
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: “The mark consists of the stylized script word “FORD” on a shaded oval carrier with two outlines; to the right is the stylized wording “BLUE ADVANTAGE”.”
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors blue and white are claimed as a feature of the mark.”
Description: “The mark consists of the stylized script word “FORD” on an oval carrier shaded blue with a white outline and a blue outer outline; to the right is the stylized wording “BLUE ADVANTAGE” in blue. The remaining white background represents transparent and is not a feature of the mark.”
See TMEP §807.07(b).
RESPONSE GUIDELINES
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.
The applicant may call or email the assigned trademark examining attorney with specific 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.
How to respond. Click to file a response to this nonfinal Office action.
/Deborah L. Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
Deborah.Meiners@USPTO.gov
RESPONSE GUIDANCE