UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/651148
APPLICANT: City of Scottsdale
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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CORRESPONDENT’S REFERENCE/DOCKET NO: 5681-SM-39
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/651148
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
NO CONFLICTING MARKS
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.
COLOR CLAIM AND COLOR DESCRIPTION CLAIRIFICATION
The applicant submitted a color drawing and a statement that that the mark may appear in gold. That statement is unacceptable for it leaves room for the applicant to submit another mark without color as well as one with color. The applicant cannot register two separate marks in one application. Therefore, the applicant needs to delete the wording “may.” Additionally, the applicant did not submit a color description. Applicant must submit the following color claim and color description: (1) a statement that “the colors gold and white are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the colors gold and white appear in the design of the horses, gold being used as the main color and white being used as highlights.” 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(ii).
The wording in the identification of services needs clarification because it is too broad and could include services classified in other international classes. The applicant needs to specifically identify the nature of the services and needs to classify each one of them accordingly. TMEP §§1402.01 and 1402.03.
“Rental of stadium” is too indefinite and the applicant must be more specific. The following is suggested, if accurate: “Rental of stadium facilities, in International Class 41.”
“Exhibition” is too indefinite and the applicant must specifically identify the services pertaining to exhibition. The following is suggested, if accurate:
“Providing facilities for exhibitions, in International Class 43” and/or
“Animal exhibitions, in International Class 41.”
“Equestrian outdoor arena” is too indefinite and the applicant must be more specific. It should be amended to read as e.g. “Arena services, namely, providing facilities for equestrian exhibitions, in International Class 43.”
“Banquet and stage facilities” needs further clarification. The applicant should amend it to read as follows, if accurate:
“Providing banquet social function facilities for special occasions, in International Class 43.”
The recitation of services listed in International Class 39 is acceptable as submitted.
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.
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
FILING FEES
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The current specimen of record comprises advertising materials that show use in connection with equestrian facilities but it is unacceptable as evidence of actual service mark use because it does not specifically identify the services listed in International Class 39, namely, the rental of vehicle parking spaces. Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
The examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark in the sale or advertising of the services. If the specimen differs from the specimen originally submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20 that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
Applicant must submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
SUBSTITUTING FILING BASIS FOR THE INTERNATIONAL CLASS 39 SERVICES
If the applicant cannot comply with the requirement for specimens for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.
In this case, the applicant may wish to amend the application to assert a 1(b) basis.
Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone or e-mail the assigned examining attorney.
Florentina Blandu, Esq.
/FBLANDU/
l.o.112
tel. (571) 272-9128
fax (571) 273-9128
e-mail florentina.blandu@uspto.gov (for informal communications)
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.