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: 6/29/2008

 

 

 

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The Office records have been searched and no similar registered mark for VENU has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Potential Conflicting Application(s)

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Information regarding pending Application Serial No. 77309770 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Identification of Services

 

The identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade. 

 

The word “sales” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  To be a service, an activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” is not a service rendered for the benefit of others.  See TMEP §1301.01(a)(ii).

 

Therefore, applicant must delete “sale(s)” and indicate with greater specificity the nature of the service.

 

Applicant may adopt the following identification of services, if accurate: 

 

IC 016:            [ACCEPTABLE AS FILED] Printed publications, namely, booklets, informational flyers, or pamphlets featuring luxury goods and services; calendars; cards, namely, announcement cards, blank note cards and place cards; forms, namely, accounting forms, blank forms, business forms and order forms; greeting cards; invitations, namely, printed invitations and invitation cards; labels, namely, paper labels; letters, namely, informational letters relating to luxury goods and services; newsletters in the field of luxury goods and services; note books; stationery writing pads; blotters; memorandum and engagement books; diaries; letter racks; postcards; posters; printed tickets; writing pads; writing paper; printed matter, namely, printed forms; newspapers; printed periodicals in the field of luxury goods and services; books in the field of luxury goods and services; printed publications, namely, booklets, journals, magazines and catalogues featuring luxury goods and services; stationery; pens; pencils; felt pens; mechanical pencils; ballpoint pens; paperweights.

 

 

IC 035:            Public relations, marketing and advertising services; publicity, namely, publicity and sales promotion services; business consultancy, namely, business management consulting services; business management and advice; business administration, namely, business administration and management; hotel and restaurant management for others; franchise services, namely, offering technical and business management assistance in the operation and establishment of ALL OF THE FOLLOWING, NAMELY, hotels, serviced apartments, restaurants, coffee shops, the provision of [DELETE] food and beverage services BUSINESSES, self service restaurants, take away restaurants, coffee shops, cafes, snack-bars, barS services [DELETE], BUSINESSES FOR preparation of food and beverages, services [DELETE], hotelS and BUSINESSES FOR temporary accommodation services; retail store services featuring a variety of consumer goods of others; office and personnel management, namely, personnel management consultation, personnel placement and recruitment, computerized office management, providing office STAFF support services, providing office functions; compiling and maintaining databases, namely, management and compilation of computerized databases, compilation and systemization of information in databanks.

 

 

IC 036:            Real estate services, namely, real estate agencies, real estate appraisals, real estate brokerage and real estate consultancy; real estate financing, namely, mortgage lending, property acquisition and consumer financing to facilitate home ownership; real estate investment, real estate leasing, real estate management; real estate sales, namely, [DELETE] real estate brokerage and real estate acquisition services; real estate valuations; real estate rentals, namely, rentals of villas, apartments, serviced apartments, town houses, cabins, office space and retail outlets; banking services; financial services, namely, financial analysis, financial consultation; financial fund management, namely, management of capital investment funds; financial investments, namely, financial investment in the field of real estate; financial leasing, namely, lease-purchase financing; financial management and financial risk management; insurance services, namely, insurance agency and brokerage services; insurance of property, namely, underwriting, issuing and administration of property and casualty insurance; insurance underwriting services in the field of life insurance, automobile insurance, property and casualty insurance; investment and brokerage services, namely, investment and brokerage services in relation to real estate property.

 

 

IC 041:            Entertainment, namely, live performances by artists and celebrities; sporting and cultural activities, namely symphony orchestra performances and theatre productions; casino services; night club services; providing golf, tennis, and pool facilities; arranging and conducting EDUCATIONAL conferences [BUSINESS CONFERENCES ARE IN CLASS 35], meetings, exhibitions, training sessions, workshops, business fairs [DELETE, SPECIFIES CLASS 35], congresses and lectures in various different fields, NAMELY, [SPECIFY DIFFERENT FIELDS].

 

 

IC 043:            Hotel and temporary accommodation services, namely, hotel services, providing temporary housing accommodations, providing temporary accommodation; reservations, booking and information services relating to making reservations and booking temporary lodging, namely, providing travel lodging information services and travel lodging agency services for travelers; hotel services for the provision of facilities for conferences, meetings, exhibitions, training sessions, workshops, business fairs, congresses and lectures; hospitality services, namely, consulting services in the field of hospitality; catering services; contract food and beverage services; provision of food and beverage services, namely, catering for the provision of food and beverage services, preparation of food and beverages, serving of food and drink or beverages; restaurant services, self service restaurant services, takeaway restaurant services, coffee shop services, cafe services, snack-bar services and bar services; event planning services [DELETE, SPECIFIES CLASS 41 SERVICES, E.G., SPECIAL EVENT PLANNING]; provision of nursery services for children, namely, nurseries and day care centers

 

 

IC 044:            [ACCEPTABLE AS FILED] Hygienic and beauty care services, namely, health spa services for health and wellness of the body and spirit, cosmetic body care services, nail care salons, providing saunas and steam room facilities, skin care salons; beauty salons; massage services and hairdressing services

 

 

See TMEP §1402.01.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Significance

 

Applicant must explain whether “VENU” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place, or has a meaning in a foreign language.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Response to Office Action

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

 

 

/Rudy R. Singleton/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 102

(571) 272-9262

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.