UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02.   

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

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

 

 

Serial Number 76/574691

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Norman Beitner on August 9, 2004, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

STANDARD CHARACTER CLAIM

 

The following standard character drawing claim is added to the record:

 

The mark is presented in standard characters without claim to any particular font style, size, or color.

 

37 C.F.R. §2.52(a).

 

 

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

 

RECITATION AND CLASSIFICATION OF SERVICES

 

Portions of the recitation of services identified in International Class 35 are unacceptable as indefinite because the applicant must clarify the nature of the services.  The applicant may adopt the following recitation, if accurate: 

 

International Class 35:            Promotion of sporting events, musical concerts and other entertainment events through [specify the nature of the promotion, i.e. placing advertisements for others]; on-line business directories featuring a listing of hotels and restaurants relating to a particular geographic area; providing consumer information in the field of travel, tourist information and shows and other entertainment events; and for providing a wide range of on-line information in the field of [specify the field of information], particularly concerning products, services, events, activities, attractions and facilities in particular geographic locations.  TMEP §1402.11.

 

The wording “Ticket agent services for dinner and hotel reservations” appears to be misclassified and should be reclassified and clarified slightly into International Class 43 as follows:

 

International Class 43:            Ticket agent services in the nature of making reservations for dinner and hotels for others.

 

Please note that, 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 services that are not within the scope of the services recited in the present identification.

 

The remainder of the recitation of services is acceptable.

 

For the applicant’s convenience, the Office’s Acceptable Identification of Goods and Services Manual is available at www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html and sets out appropriate language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.  The applicant may find it helpful to consult and to search the manual when amending the recitation and classification of services.  It is only a guide and subject to modification.

 

Advisory:

 

The proposed mark appears to be comprised of an Internet address used to access applicant’s online computer information.  In view of this, applicant is advised that registration may be refused upon consideration of an amendment to allege use or statement of use.  Such a refusal would be based on a determination that the proposed mark, as used on the specimen, does not function as a service mark.  Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; TMEP §1215.02(e).

 

Where a proposed mark only serves to indicate the applicant’s domain name or the Internet location where applicant’s website appears, and does not separately identify the applicant’s services, the mark fails to function as a service mark.  In re Eilberg, 49 USPQ2d 1955 (TTAB 1998); TMEP §1215.02(a).  A proposed mark comprising an Internet address is registrable only where the mark also functions as a source indicator for the identified services.

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

/Bridgett G. Smith/

Examining Attorney

Law Office 115

(703) 308-9115 x 217

(703) 872-9237 fax

 

 

 

 

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