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  76/532315

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

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.

Refusal to Register on Principal Register – 2(e)(1) Mark Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The applicant is using the mark, PRIVE PRIVATE CLUBS OF DISTINCTION, in connection with resort and hospitality services, in International Class 043.    The word, PRIVE means PRIVATE in English; the word PRIVATE describes not available for public use, control, or participation, e.g., a private club[1].  The word, CLUBS, describes the building, room, or other facility used for the meetings of an organized group.[2]  The word, DISTINCTION describes a special feature or quality conferring superiority,[3] and is laudatory. (See attached definitions) 

  Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k).  That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).  See attached Hits and articles from the Internet where the words private clubs are used to describe resorts. 

 

For the above reasons, the mark, PRIVE PRIVATE CLUBS OF DISTINCTION is descriptive of the services and registration is refused on the Principal Register.

 

Information Requirement

In order to allow for proper examination of the application, including final determination as to whether the mark is merely descriptive in relation to the services, the applicant must submit samples of advertisements or promotional materials for the services, or if unavailable, for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Amendment to Supplemental Register Suggested

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et

seq.

 

Applicant must insert the required disclaimer of CLUBS if registration of the mark is sought on the Supplemental Register because CLUBS is generic in the context of applicant’s services.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Informality

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Incorrect Classification – Adopt Particular Class for Services

The applicant has classified the services incorrectly in International Class 041.  The applicant must amend the application to classify the services in International Class 043.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b). The applicant may adopt the following recitation of services, if accurate: 

 

            Resort and hospitality services, in International Class 043

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Odessa Bibbins

/Odessa Bibbins/

Trademark Attorney

Law Office 113

Telephone: (703) 308-9113 x 475

Fax: (703) 746-8113 

ecom113@uspto.gov  OFFICIAL RESPONSE

Odessa.Bibbins@uspto.gov  Informal Response

 

ADVISORY:  The Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”) is effective November 2, 2003.  It is posted on the USPTO website at http://www.gov.uspto.report/web/trademarks/PL107_273.htm#D.  A Final Rule, published in the Federal Register on September 26, 2003 is posted at http://www.wipo.int/madrid/en/.

 

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.