UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE 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: 6/25/2008

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

SEARCH RESULTS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

CLASSIFICATION and IDENTIFICATION of SERVICES

Class 35

Applicant classified the services “Providing accommodation information, namely ratings of accommodations” in International Class 035; however, the correct classification is International Class 043.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The wording in the identification of services is indefinite and must be clarified.  TMEP §1402.01.

Please note that “providing information” is classified according to the service-related subject matter.  TMEP §§1402.01 and 1402.03.

Applicant classified the services “providing airfare and hotel rate comparison information” in International Class 035; however, the correct classification is International Class 039 for airfare information and 043 for hotel rate information.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). 

In addition, the term “and/or” in the identification is indefinite and must be clarified.  TMEP §1402.01.  The term “or” suggest that the applicant provides one type of service, or another, but not both.  The applicant may simply substitute the term “and” for “and/or” to clarify the identification.

 

Class 38

Applicant classified the services “providing an online computer database in the field of travel information; providing access to electronic data in the of field of travel information that users have uploaded, posted, sent, and transmitted so that other users can comment on, share, view, navigate, compile, and organize the data via electronic communication networks” in International Class 035; however, the correct classification is International Class 039.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). 

 

Class 39

Again, the term “or” in the identifications is indefinite and must be clarified.  TMEP §1402.01.  The term “or” suggest that the applicant provides one type of service, or another, but not both.  The applicant may simply substitute the term “and” for “or” to clarify the identification. 

 

Class 41

Applicant classified the goods and/or services “providing a website where users can post ratings, reviews and recommendations on events and activities in the fields of entertainment, travel, and hotels” in International Class 041; however, the correct classification is International Class 041 for entertainment, Class 039 for travel, and Class 043 for hotels.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

 

Class 43

Applicant classified the goods and/or services “hotel and lodging services, namely, securing payment in connection with reservations and bookings for temporary lodging” in International Class 043; however, the correct classification is International Class 036.  Applicant must either delete these goods and/or services or add International Class 036 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Class 45

The wording “concierge services for others comprising making requested personal arrangements and reservations and providing information to meet individual needs rendered at local hotels, resorts and entertainment venues” in the identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03. 

 

 

Applicant may substitute the following wording, if accurate:  

Class 35:  customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the use of charge and credit card accounts of others through the administration of incentive programs; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes; business consulting services in the field of travel and travel planning; advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks

 

Class 36:   Credit card and electronic payment processing, namely securing payment in connection with reservations and bookings for temporary lodging by ____________ [specify payment procedure, e.g. electronic processing of credit card transactions and electronic payments by means of a telephone, facsimile, the mails, courier and over computer networks and global communication networks]

 

Class 38:  providing online bulletin board services and chat room services over computer networks and electronic communication networks, in the fields of entertainment, travel, fitness, hotels, and restaurants

 

Class 39:  travel agency services, namely, making reservations and bookings for transportation; providing information, news and reviews concerning travel by means of a telephone, facsimile, the mails, courier and over electronic communication networks; providing a website and website links to travel information, geographic information, maps, map images and trip routing; organizing and arranging travel activities, namely, tours, travel to events and travel to attractions; making reservations for travel activities, namely for tours, travel to events and travel to attractions; providing information about tours and travel to events and attractions; organizing sight-seeing tours; travel agency services, namely, making reservations and bookings for transportation; travel and tour information services; travel and tour ticket reservation services; arranging bookings of day trips and sight-seeing tours; providing an online computer database in the field of travel information; providing access to electronic data in the of field of travel information that users have uploaded, posted, sent, and transmitted so that other users can comment on, share, view, navigate, compile, and organize the data via electronic communication networks; providing a website where users can post ratings, reviews and recommendations on events and activities in the field of travel

 

Class 41:   providing information about entertainment activities, and making reservations and bookings for shows and other entertainment events; computer services, namely providing online newsletters in the fields of travel, travel planning, travel and entertainment news, maps, city directories and listings via electronic communication networks for use by travelers; providing information in the field of entertainment; providing entertainment activities, namely, arranging for ticket reservations for shows and other entertainment events; providing a website where users can post ratings, reviews and recommendations on events and activities in the field of entertainment; publishing of reviews

 

Class 43:  travel agency services, namely, making reservations and bookings for temporary accommodations; hotel and lodging services, namely, providing and relaying information in connection with reservations and bookings for temporary lodging and providing reviews of hotels by means of a telephone, facsimile, the mails, courier and over electronic communication networks; travel agency services, namely, making reservations and bookings for restaurants and meals; providing a website where users can post ratings, reviews and recommendations on events and activities in the field of hotels

 

Class 45:    concierge services for others comprising making requested personal arrangements and reservations and providing information to meet individual needs, all rendered at local hotels, resorts and entertainment venues

TMEP §1402.01.

For assistance with identifying and classifying 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.

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.

The decision as to the proper classification of services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak inc., 164 USPQ 88 (TTAB 1969).

Adding Classes

The application identifies goods and/or services that are classified in at least 7 classes; however, the fees submitted are sufficient for only 6 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

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; or

 

         (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)     Applicant must list the goods and/or services by international class; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Claim Ownership of Prior Registrations (expanded)

 

If applicant is the owner of U.S. Registration Nos. 2220719, 2224559, 2240373 and others, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2220719, 2224559, 2240373 and others.

 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

/Suzanne Blane/

Trademark Examining Attorney

Law Office 114

Tel. 571-272-5497

suzanne.blane@uspto.gov

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/25/2008 FOR

APPLICATION SERIAL NO. 77421562

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77421562&doc_type=OOA&mail_date=20080625 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/25/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.