PROVISIONAL REFUSAL OF PROTECTION
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`The table below presents the data as entered.
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`Input Field
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`IDENTIFICATION SECTION
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`INTERNATIONAL REGISTRATION NUMBER
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`1348446
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`OFFICE REFERENCE
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`ORIGINAL LANGUAGE CODE
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`FILE SECTION
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`79209316
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`ENGLISH
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`Entered
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`FILE SPECIFICATION OF THE DOCUMENT
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`\\TICRS\EXPORT17\IMAGEOUT17\792\093\79209316\xml5\MOC0002.xml
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`GOODS AND SERVICES SECTION
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`ALL GOODS AND SERVICES INDICATOR
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`Protection has been refused for all the goods and services.
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`INSTRUCTIONS SECTION
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`FREE TEXT PROCESSING INSTRUCTIONS
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`U. S. designated on 20160908; Non-final examiner action
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`MAIL DATE
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`06/24/2017
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO.   79209316
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`           
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`MARK: JAG
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`*79209316*
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`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`CORRESPONDENT ADDRESS:
`  
`       Reddie & Grose LLP
`  
`       16 Theobalds Road
`         London WC1X 8PL
`           UNITED KINGDOM
`    
`   
`APPLICANT: Jaguar Land Rover Limited
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`        
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`CORRESPONDENT’S REFERENCE/DOCKET NO :       
`CORRESPONDENT E-MAIL ADDRESS:   
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`  N/A
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`INTERNATIONAL REGISTRATION NO. 1348446
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
`
`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do so, enter the U.S. application serial
`number for this application and then select “Documents.”   The Mailing Date used to calculate the response deadline for this provisional full
`refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
`
`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. 
`See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
`
`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 RESULTS
`
`The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark
`Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.
`
`Applicant must respond to the following requirements.
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`IDENTIFICATION OF GOODS/SERVICES
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`GENERAL GUIDELINES
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`In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as
`possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,
`” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific
`goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).
`
`In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as
`possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words
`and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be
`followed by “namely,” and a list of each specific service identified by its common commercial or generic name.   See TMEP §1402.03(a).
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`Applicant should use semicolons (;) to separate disparate goods/services.  Misuse of the semicolon may result in further confusion and ambiguity
`and therefore, further required amendments.  The comma (,) should be used to separate lists of goods in a category, generally following the
`prefaces “namely,” “consisting of,” “featuring,” or comprised of,” etc.
`
`The identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications. 
`Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the
`parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”   TMEP §1402.12. 
`Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information
`into the description.
`
`According to the Manual of Acceptable Identifications of Goods and Services, parenthetical information is not required to be placed in
`applicant’s identification of goods and services.
`
`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 narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  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 narrowed.  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). 
`Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible
`amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization
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`(International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).   
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`UNACCEPTABLE IDENTIFICATION
`
`PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended
`changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information
`
`into the amended description.  
`Class 12
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`Applicant filed the following identification:
`
`“Vehicles; apparatus for locomotion by land; vehicle axles; motor vehicle bodies; brake callipers, braking installations, draw bars,
`bumper bars, clutches, differential gears, drive gears, drive shafts, engines and motors, gear change selectors, transmissions, transmission
`shafts, hydraulic cylinders and motors, couplings and carrying bearings, all for land vehicles; chassis for motor vehicles; manual and
`power steering apparatus (other than automatic), personal safety restraints, seats, sliding roofs, steering columns, all for vehicles; vehicle
`wheel hubs; vehicle wheels; deflectors, direction indicators, doors, hatches, upholstery, handles for doors, horns, mirrors (retrovisors),
`mud-flaps, snow chains, shock absorbers, springs, stabiliser bars, steering wheels, steering linkages, suspensions, torsion bars, tow bars,
`windows, window winding mechanisms, windscreen wipers, all for vehicles; arm rests for motor vehicles; balance weights for vehicle
`wheels; spare wheels; shaped covers for steering wheels; brake pads and brake linings, all for land vehicles; cabs for trucks and for
`tractors; caps for vehicle fuel tanks; mechanical controls for brakes, clutches, accelerators and for transmissions, mountings for engines,
`all for land vehicles; tanks, engine noise shields, protective covers, radiator grilles, reservoirs for fluids, stowage boxes and stowage
`compartments, wheel carriers, all being parts of vehicles; tilt mechanisms for vehicle cabs; trim panels for vehicle bodies; pumps for
`inflating vehicle tyres; sun blinds for vehicles; motor land vehicles; parts and fittings for motor land vehicles; military vehicles; police
`vehicles; trailers; parts and fittings for all of the aforesaid goods, none being for engines or motors.”
`
`Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods
`and/or services is unclear.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods
`and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as
`well as its main purpose, channels of trade and intended uses.
`
`Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.
`
`The following substitute identification with amended wording is suggested, if appropriate:
`
`“Vehicles, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; apparatus for
`locomotion by land, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; vehicle
`axles; motor vehicle bodies; LAND VEHICLE PARTS NAMELY, brake callipers, braking installations, draw bars, bumper bars,
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`clutches, differential gears, drive gears, drive shafts, engines and motors, gear change selectors, transmissions, transmission
`shafts, hydraulic cylinders and motors, couplings and carrying bearings; chassis for motor vehicles; LAND VEHICLE PARTS
`NAMELY, manual and power steering apparatus, other than automatic; personal safety restraints, seats, sliding roofs, steering
`columns, all for vehicles; vehicle wheel hubs; vehicle wheels; deflectors, direction indicators, doors, hatches, upholstery, handles for
`doors, horns, mirrors, mud-flaps, snow chains, shock absorbers, springs, stabiliser bars, steering wheels, steering linkages, suspensions,
`torsion bars, tow bars, windows, window winding mechanisms, windscreen wipers, all for vehicles; arm rests for motor vehicles; balance
`weights for vehicle wheels; spare wheels; shaped covers for steering wheels; brake pads and brake linings, all for land vehicles; cabs for
`trucks and for tractors; caps for vehicle fuel tanks; mechanical controls for brakes, clutches, accelerators and for transmissions, mountings
`for engines, all for land vehicles; tanks, engine noise shields, protective covers, radiator grilles, reservoirs for fluids, stowage boxes and
`stowage compartments, wheel carriers, all being parts of vehicles; tilt mechanisms for vehicle cabs; trim panels for vehicle bodies; pumps
`for inflating vehicle tires; sun blinds for vehicles; motor land vehicles; parts and fittings for motor land vehicles, NAMELY,
`{FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; military vehicles FOR TRANSPORT;
`police vehicles, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; trailers; parts
`and fittings for all of the aforesaid goods, none being for engines or motors.” in Class 12
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`Note:
`
`1.     Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names
`within this class.  http://tess2.uspto.gov/netahtml/tidm.html.
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`Class 37
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`Identification acceptable as filed.
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`SIGNIFICANCE INQUIRY
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`Applicant must explain whether “ JAG” has any meaning or significance in the industry in which the goods and/or services are
`manufactured/provided, or if such wording is a “term of art” within applicant’s industry.
`  Applicant must also explain whether this wording
`identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.
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`If “ JAG” has any meaning in a foreign language applicant must provide a translation.
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`Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d
`1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
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`RESPONSE
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.   See TMEP §§705.02,
`709.06.
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S.
`commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the
`proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R.
`§2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature,
`or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).
`
`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
`
`.03(b), 608.01.  
`DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
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`C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.     
`
`/Paul Moreno/
`/Paul Moreno/
`United States Patent and Trademark Office
`Attorney
`Law Office 103
`571-272-2651
`paul.moreno@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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