Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/516826

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Recitation of Services

The recitation of services is unacceptable as indefinite.  The amended recitation of services should NOT include any parenthesis or brackets.  The brackets below are informational brackets to provide instruction to the applicant, but should NOT be copied into the final recitation.  The applicant may adopt the following recitation, if accurate: 

 

Advertising services, namely, ______ [specify e.g. creating corporate logs for others]; Advertising agencies services; Arranging publication subscriptions for others; Auctioneering; Business management and business organizational consultation services; Business management assistance; Business management of hotels for others; Business management of performing artists; Commercial or industrial management assistance; Compilation of business information into computer databases, namely, computerized database management; Import-export agencies services; Organization of exhibitions for commercial or advertising purposes, namely, _____ [indicate particular commercial or advertising purpose(s)]; Organization of trade fairs for commercial or advertising purposes in the field of _____ [indicate specific field e.g. automobiles, art, crafts]; Personnel management consultation; Sales promotion for others, namely, _____ [specify e.g. modeling for advertising or sales promotion]; Computerized online, retailing and wholesale _______ [specify type of “wholesale” service e.g. distributorships, ordering, stores] services featuring cosmetics, skin care and body care products, hair care products, cleansing agents for human body, bags, traveling bags, trunks, umbrellas, bedding, towels, bath towels, handkerchiefs, clothing and clothing accessories, boots and shoes, video disks, laser records, audio tapes, video tapes, books, magazines, diving and swimming supplies, stationery, recreational items, exercising and sporting goods, beauty products, medical appliances and instruments, and nutritive serving as medical supplementary, foodstuff, and beverages; Television advertising, namely, _____ [specify e.g. providing television advertising for others, television advertising agencies]; Operation of a business for others, namely, business operation planning of clubs and related business consultation services; Management of business offices for others, in Class 35;

 

Publication of printed matter in the nature of _____ [specify type of “printed matter”], text books, books, magazines, and literature in the nature of ______ [specify type of “literature” format]; Correspondence courses in the field of ______ [specify] [or state “correspondence schools”]; Provision of training courses in dances, make-up and beauty-related treatments; Provision of teaching and courses of instruction at the _____ [indicate level e.g. high school, college] level relating to the knowledge and skill in dancing and beauty-related treatments; Consultation services relating to the provision of know-how in teaching aerobic exercises and fitness; Arranging and conducting of educational symposiums in the field of _____ [specify]; Organization of sports competitions; Amusement parks services; Club entertainment services, namely, ____ [specify e.g. theatrical and musical floor shows provided as discothèques and night clubs]; Provision of gymnasium facilities; recreational services in the nature of provision of swimming pool facilities; Provision of tennis court facilities; Provision of bowling alleys facilities; Provision of golf facilities; Provision of sports facilities; Provision of recreation facilities; Gymnastic instruction services; Physical education services; Production and distribution of motion picture films [see note below re: “production and distribution services”]; production of records, tapes, video tapes, video compact discs; Production of radio and television programs; Production of live performances of concerts, operas and dramatic plays; Entertainer services, namely, _____ [specify e.g. personal appearances by a _______ [indicate type of individual, e.g., movie star, sports celebrity, magician]; Booking of seats for shows; Rental of sports equipment except vehicles or protective clothing; Rental of tennis courts; Rental of recording studio; Rental of audio equipment, tapes, video tapes and films, in Class 41;

 

Architectural design services; Engineering services; Design of interior decoration; Land surveying; Computer program design services for others; Computer software design services for others; Computer systems analysis; Maintenance of computer software, in Class 42;

 

Hotels and motels; Making hotel reservations for others; Providing hotel and temporary housing accommodation services; Restaurant, cafeteria, cafe, coffee bar [note:  “retail coffee shops” is a Class 35 service], snack bar services; Rental of meeting rooms, namely, providing community centers for social gatherings and meetings [note:  “providing facilities for business meetings” is a Class 35 service], in Class 43;

 

Landscape gardening; Beauty salons and hairdressing salon services; Health spa services, namely, provision of sauna services; Slimming services, namely, weight reduction diet planning and supervision; Massage services; Manicuring services; Providing public baths facilities for hygiene purposes; Professional consultation services relating to beauty-related treatment, namely, providing information about beauty; Providing consultation services in the fields of food nutrition and nutrition counseling; Health care services; Health care services, in Class 44;

 

Hotel concierge services, in Class 45.

 

TMEP §1402.11.

 

Note:  The Id Manual is very specific about the recitation of “Production and distribution of motion pictures, in Class 41.”  It states:

 

This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. This is not the case when distribution relates to videotapes, audio tapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. For this reason, distribution of videotapes, audio tapes, video disks, etc. should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in Class 41

 

Note:  The wording “Providing interactive access to a global computer information network for the transfer and dissemination of a wide range of information” is no longer an acceptable recitation.  It the applicant is a content provider then the applicant may elect the “providing information” recitation below and the content of the information will determine the class.  If the applicant is providing “access” (and not content) then the applicant may select the “access” recitation below, noting the Class 38 classification.

 

Providing information in the field of [indicate service-related subject matter or field] via the Internet, in Class ____ [classification depends on service-related subject matter].

 

Providing multiple-user access to a global computer information network, in Class 38.

 

Note:  While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods and/or services that are not within the scope of the goods and/or services recited in the present identification.

 

Note:  The applicant may also refer to the Acceptable Identification of Goods and Services Manual located on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual for additional suggestions of acceptable identifications.

 

Requirements for Combined Applications

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  Note:  The applicant has paid for five (5) classes to date.

 

Disclaimer

The applicant must insert a disclaimer of SPA in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  The applicant’s services include spa related services.  The term “spa” is descriptive of a feature of the applicant’s services and must therefore be disclaimed.

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use SPA apart from the mark as shown.

 

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

 

/Gina M. Fink/

Trademark Attorney - Law Office 103

Phone: (703) 308-9103 ext. 232

Law Office 103 Fax: (703) 746-8103

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.