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

 

This letter responds to the applicant's communication filed on March 12^th, 2004.  The amended recitation of services in Classes 35, 42, 43 and 44 is acceptable as is.  The amended recitation of services in Class 41 is unacceptable.  The requirement for clarification of the recitation of services in Class 41 is continued and made FINAL.  The disclaimer is acceptable and is made of record.

 

Recitation of Services in Class 41

The amended recitation of services in Class 41 is unacceptable as indefinite.  The first phrase, namely, “Publication of printed matter in the nature of advertising; teaching and instruction services relating to knowledge and skill in beauty related services; text books, books, magazines, and literature in the nature of advertising, teaching and instruction services relating to knowledge and skill in beauty related services;” is unacceptable as unclear, indefinite and an expansion of scope of the original Class 41 recitation of services.  The applicant may adopt the following recitation, if accurate: 

 

            Publication of printed matter in the nature of text books, books and magazines in the fields of advertising, and teaching and instruction relating to knowledge and skill in beauty related fields; Correspondence courses in the field of health, salons, massage, weight-reduction; Provision of training courses in dances, make-up and beauty-related treatments; Provision of teaching and courses of instruction at the high school and college levels 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 symposium in the field of healthcare, dances, exercise, spa; Organization of sports competitions; Amusement parks services; Club entertainment services, namely, theatrical and musical floor shows provided as discotheques 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 recreational facilities; Gymnastic instruction services; Physical education services; Production and distribution of motion picture films; 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, personal appearances by a movie star, sports celebrity, magician; Booking of seats for shows; Rental of sports equipment except vehicle or protective clothing. Rental of tennis courts; Rental of recording studio; Rental of audio equipment, tapes, video tapes and films, in Class 41. 

 

TMEP §1402.11.

 

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.

 

This requirement is continued and made FINAL.

 

Options - Proper Response to Final Office Action – Partial Refusal(s)/Requirement(s)

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.

 

If applicant fails to respond within six months of the mailing date of this final action, then the goods and/or services and/or class(es) to which the final refusal(s) and/or requirement(s) apply will be deleted from the application.  The application will proceed forward for the remaining goods and/or services and/or class(es) only.  37 C.F.R. §2.65(a).

 

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 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.