| To: | Mayo Hotel & Lofts Limited Partnership (pchiu@fdlaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 77250506 - MAYO - 5640.3 |
| Sent: | 11/15/07 12:32:40 PM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/250506
MARK: MAYO
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Mayo Hotel & Lofts Limited Partnership
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 11/15/2007
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.
The following issues were discussed in communication with Penina Chiu, Esq. on November 15, 2007.
The identification of services is unacceptable as indefinite because some of the terms require further specificity. For example, the term "sales" in the identification of services is unacceptable because selling is not considered a service that is rendered for the benefit of someone other than applicant. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); TMEP §§1402.01 and 1402.03.Suggestions and explanations are incorporated into the identification proposed below. TMEP §1402.01. The applicant may adopt the following identification, if accurate:
International Classes 035, 039, 041 and 043 are acceptable as provided.
Building management; rental of apartments; leasing of apartments; apartment housing management; condominium operation services¸ namely, {specify nature of operating services, e.g., management, etc.}; [“development [“and sale” deleted] of condominiums and lofts” {assigned to International Class 037}]. International Class 036; and,
Development of condominiums and lofts. International Class 037.
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 goods or services that are not within the scope of the goods and services recited in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Multiple Class Requirements
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least 6 international classes, however applicant paid the fee for only 5 classes.
Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. 2.86(a)(2); TMEP §§810.01 and 1403.01. Effective January 31, 2005, the filing fee for adding classes to an application is as follows:
(i) $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,
(ii) $375 per class, when the fees are submitted with a paper response.
Please note, the filing fee for adding classes to a TEAS Plus application is $275 per class, provided all the following requirements are satisfied: (1) the fee(s) is submitted using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html or by examiner’s amendment; (2) applicant filed a complete TEAS Plus application; (3) applicant has filed and continues to file certain communications via TEAS (e.g., responses to Office actions); and (4) applicant maintains its authorization to receive Office communication via e-mail. 37 C.F.R. §§2.6(a)(iii), 2.22(a) and 2.23.
If any of the TEAS Plus requirements are not satisfied, then applicant must submit a fee of $50 per class for all active classes in the application as filed; and the fee for adding any classes to the application shall be $325 per class if added via TEAS, or $375 per class if added in a paper response. 37 C.F.R. §§2.6, 2.22(b) and 2.23(b); TMEP §810.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 035, 036, 037, 039, 041 and 043. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
If applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned trademark examining attorney directly at the number below.
/Scott Sisun/
Law Office 110
(571)272-5493
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.