UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/651149
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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MARK: WESTWORLD OF SCOTTSDALE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 5681-SM-40
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 76/651149
The assigned examining attorney has reviewed the referenced application and determined the following.
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78552368. 37 C.F.R. Section 2.83.
There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant's filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
Action on this application will be suspended pending the disposition of Application Serial No.78552368, upon receipt of the applicant's response resolving the following informalities.
Applicant must insert a disclaimer of the geographic term SCOTTSDALE in the application because it informs the consumers where the services come from. Scottsdale is defined as a city of south-central Arizona, a suburb of Phoenix. It is a noted resort area and retirement community[1]and the entity offering the services in question comes from Scottsdale and the services are rendered in Scottsdale. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “SCOTTSDALE” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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 material featuring information with respect to the equestrian centers and is unacceptable as evidence of actual service mark use for the rental of vehicle parking spaces because it does not specifically identify those services. 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
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.