To: | Ford Motor Company (tmdocket@ford.com) |
Subject: | U.S. Trademark Application Serial No. 90823370 - FORD - 84397698 |
Sent: | March 04, 2022 03:00:41 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. 90823370
Mark: FORD
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Correspondence Address: |
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Applicant: Ford Motor Company
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Reference/Docket No. 84397698
Correspondence Email Address: |
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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 04, 2022
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
U.S. APPLICANT TRADEMARK ACT SECTION 44(e)
If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:
(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and
(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.
If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.
CLARIFICATION OF THE IDENTIFICATION OF GOODS AND SERVICES
In class 39, applicant must clarify the nature of the transport services. “Online services to provide data and information regarding mobile activities, namely, ride sharing, car sharing, vehicle fleet management, travel by autonomous vehicles and combinations of multi-modal travel alternatives” is unclear, and is broad enough to include software related services. “Fleet management” is overbroad because it includes class 37 and 35 services.
In class 42, the nature of the scientific and technological services must be clarified. Applicant must specify what is being analyzed, and specify the nature of the research being provided.
Applicant may substitute the following wording, if accurate:
Class 39: {specify type, e.g., marine, car, truck} Transport; packaging and storage of goods; travel arrangement; providing online
transportation information regarding mobile activities, namely, ride sharing, car sharing, vehicle fleet management, travel by autonomous vehicles and combinations of multi-modal travel
alternatives; providing road and traffic information; vehicle routing by computer on data networks responsive to monitored pollution data to reduce pollution emissions in locations having elevated
pollution levels, vehicle routing by computer on data networks responsive to monitored pollution data to reduce exposure of persons to pollution, vehicle routing by computer on data networks to avoid
traffic and weather conditions or to find prompt access to medical care, and vehicle routing by computer on data networks to available parking spaces; providing online
information regarding parking garage and parking lot services, vehicle parking space availability, routing of vehicles by computer on data networks to available parking spaces, traffic, traffic
routing, routing of vehicles to avoid traffic, ride sharing, car sharing, and vehicle fleet management; providing online information regarding mobile activities, namely, urban
route planning, traffic avoidance planning; providing online information related multi-modal travel alternatives in the nature of route planning; providing online information regarding vehicle traffic to avoid elevated pollution levels
Class 42: Scientific and technological services, namely, {specify type of services, e.g., scientific research, analysis, testing, etc.} in the field of {indicate field or subject matter} and research and design relating thereto; industrial analysis of {specify what is be analyzed, e.g., oil fields} and scientific research services; design and development of computer hardware and software; air quality data collection services; providing temporary use of online non-downloadable software for collecting, tracking, analyzing, assigning, billing, and distributing data and information regarding urban and mobile activities, namely, providing road, traffic, weather, and pollution information, routing traffic, parking, ride sharing, car sharing, vehicle fleet management, and traffic monitoring and planning
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 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.
How to respond. Click to file a response to this nonfinal Office action.
/Keri-Marie Cantone/
Examing Attorney, Law Office 104
(571) 272-6069
Keri.Cantone@uspto.gov
RESPONSE GUIDANCE