UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/524397
MARK: THE CELTIC FOOTBALL
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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: Celtic F.C. Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned examining attorney has reviewed the referenced application and determines as follows:
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.
If applicant elects to respond to the refusal above, applicant must also respond to the issue(s) as follows
Identification of Goods
Applicant’s description of goods is unacceptable because it is indefinite. §1402.1.
Class 009: Computer games; video games; games programs; games apparatus; video discs; electronic amusement apparatus; program memory cartridges for electronic amusement apparatus; personal digital assistants with satellite communication capability; electric and electronic communication apparatus; CD-ROM players; electronic, electric and/or mechanical amusement machines; automatic slot machines; recorded video discs and video tapes; DVD-ROM players; programmed-data-carrying electronic DVD-ROMs; DVD-ROM encoded virtual reality game software; DVD-ROM encoded video game software; encoded video DVD-ROM drivers; cases adapted for CDs and DVD-ROMS; computer peripherals; optical apparatus and instruments; computer software relating to sports or entertainment and leisure matters or football; computer programs for use in communications; computer programs relating to telecommunications; computers; computer software; computer software for personal computers; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including websites); computer software and telecommunications apparatus (including modems) to enable connection to databases and the Internet; computer software to enable searching of data; computer software for wireless application protocol; wireless application protocol apparatus and instruments; computer games software and computer games consoles; games apparatus adapted for use with television receivers; records; videos; DVDs; radios; smart cards; encoded cards and cards bearing machine readable information; CD-ROMs; personal organizers and personal stereos; compact discs; video cassette recorders; DVD players; apparatus and instruments for the recording, transmission or reproduction of data, sound or images; hi-fi systems; cameras, camcorders and photographic apparatus and instruments; cases for photographic apparatus; calculators; telephones; mobile phones, covers, fascias and cases for mobile phones, accessories for mobile phones; phone cards; sunglasses and cases for sunglasses; spectacles and contact lenses; cases for spectacles and contact lenses; audio visual teaching apparatus; binoculars; radio alarm clocks; identity cards; debit cards; screens; screensavers; electronic scoreboards; credit cards (encoded); computer mouse, computer mouse mats; gum guards; gum shields; protective clothing; protective headwear; protective helmets; protective helmets for use in sports; protective gloves; face protectors; shin pads; magnets; decorative magnets; identification labels (encoded or magnetic); active electronic labels containing coded information; encoded labels for use in marking products for identification, security or verification; magnetic labels for use in marking products for identification, security or verification; self adhesive labels (encoded or magnetic)
Class 016 Paper; paper products; stationery and office requisites; stationery products; printed matter; teaching materials; books; autograph books; photographs; paper bags, plastic bags; gift bags; wrapping material and packing paper; periodical publications; calendars; photographic albums; greeting cards; Christmas cards; postcards; diaries; address books; personal organizers in paper form; organizers; newspapers; note-pads, notebooks; newsletters; leaflets; catalogues; geographical maps; mats for beer glasses; portraits; magazines; match programs; match tickets; brochures; stickers; photocards; photographs; albums; binders; business card holders; packaging; posters; prints; artists' materials; paintings; engraving plates; engravings; paper knives; lithographic works of art; paperweights; pens; pencils; pen and pencil cases, erasers; rulers; pen holders and pen clips; drawing instruments, drawing materials and drawing sets; crayons; paper flags; book markers; chart pointers; stencils; coasters; cheque book and passport holders; table mats and table napkins of paper; removable tattoos (decalcomanias); flags and pennants of paper; document holders; car bumper stickers; tax disc holders; labels; adhesive labels; badges of paper; badges of cardboard
Class 020: Chairs, furniture, decorative wall plaques, sign boards; figurines; badges; novelty badges; wall plaques; containers of wood and of plastic; curtains of bamboo and of bead, curtain holders, hooks, rails, rings, rods, rollers and tie backs; bedding; pennants; jewelry boxes; statuettes and figurines; mirrors; picture frames; key rings
Class 021: Glassware, porcelain, earthenware and ceramic articles, tankards, household and kitchen utensils and containers; domestic utensils; dishes; tumblers; beer holders; mugs, cups and crockery; lunch boxes; combs, piggy banks, drinking flasks, shoe horns; beer mugs; heat insulated containers for beverages; bottle openers; badges made of glass; coasters, not of paper and other than table linen; portable coldboxes; coolers (ice pails); portable coolers; corkscrews; drinking glasses; flasks; ice buckets; manual mixers (cocktail shakers); pottery; refrigerating bottles; table plates; tableware holders; tableware; brushes; shaving brushes; shaving bowls and stands; vases; brushes for pets; food and/or drink containers for pets
Class 024: Rugs, towels, beach towels; flags and pennants, blankets; bed linen; bed covers, duvet covers; textiles; table covers and table linen, curtains, banners, handkerchiefs of textile, travelling rugs, lap rugs, bath linen, bunting, household linen, mats of linen, textile piece goods; coasters; napkins; wall hangings; labels; adhesive labels; badges of fabric, bathmats
Class 025: Clothing, headwear and footwear; clothing of leather and of imitation leather; belts ; money belts; t-shirts, polo shirts, football shirts and shorts, rugby shirts, jackets, ties, bow ties, pullovers, trousers, socks, shirts, sweaters, sweatshirts, pants, jerseys, pajamas, jumpers, waistcoats, kilts; articles of outer clothing; blazers, coats, fleece tops and fleece suits, padded jackets; rain jackets; knitwear; leisure suits; sports jerseys; sports clothing; track suits, training gear, headbands, football socks, rugby tops, rugby shorts; skirts, dresses, night dresses; dressing gowns; sleepwear; underwear; boxer shorts; sports underwear; leotards, swimwear, bathing suits, bikinis, swimming trunks, beachwear; waterproof clothing; wax jackets, oil skins, galoshes, anoraks, wet suits; braces; hats and caps; baseball caps; sandals, slippers, training shoes, boots, football boots, ski boots; gloves, mittens and scarves; bibs; baby's bibs; children's clothing; baby clothes; loungewear; wristbands
Class 026: Badges; pin badges; cloth badges; other badges not of precious metal or of cloth, rosettes, ornamental novelty badges, thimbles, ribbons, buttons; lace and embroidery; artificial flowers; buckles; heat adhesive patches; hair ornaments; hair bands; clothing accessories
Class 028: Games; board games; card games; playing cards; toy card games; automatic games other than coin-operated and those adapted for use with television receivers only; coin-operated video games; electronic game equipment; hand held electronic games; hand held units for playing electronic games; stand alone video output game machines; stand alone video game machines; electronic amusement apparatus adapted for use with liquid crystal displays; games adapted for use with dot matrix crystal displays; jigsaws; toys and playthings; toy buses; sporting articles; rugby balls; balls for sport; playing balls; footballs; mini footballs and mini rugby balls; soft toys; teddy bears; dice; dominoes; dolls and toy figurines; flying discs; playing cards; toy vehicles; masks and toy masks; building blocks; marbles; mobiles; parlour games; rattles; spinning tops; darts; balloons; bath toys and toys for use in swimming pools; jokes; conjuring apparatus and instruments and magicians' sets; gymnastic and body training apparatus; body building apparatus; bar bells; dumb bells; shin guards; knee guards; elbow guards (sports articles); gloves for games; skateboards, roller skates; skating boots; skis; surfboards, surf skis, water skis; scooters; paragliders; fishing rods, fishing tackle and fishing bags; golf clubs, golf bags and golf accessories; bags for boots and for trainers; kites; skittles; paintball guns and paintballs; rocking horses; ornaments for Christmas trees; Christmas crackers; sleighs; bob-sleighs; automatic and coin operated amusement machines; confetti; swings, slides, climbing frames and climbing apparatus (playthings); remote control toys and playthings; animated toys and playthings; toys for pets; parts and fittings for all the aforesaid goods
Class 036: Insurance, banking services, credit card services, accident insurance, debentures services, securities services, financial services; credit services; loan services; mortgage services; trust services; trustee services; consultancy, information and advisory services relating to all of the aforesaid services
Class 045: Sporting services, organization of sporting events and activities, recreational services; information relating to entertainment or sports, provided on-line from a computer database or the Internet; musical concerts; museum services; ticket reservation services; electronic games services provided by means of the Internet; club services; fan club services; presentation of live performances; publishing services, arranging and conducting of seminars; physical education, training (practical demonstrations), sport camp services; soccer schools; soccer training; soccer coaching; education services; education relating to sports and leisure, organization of sporting events and competitions, organization of exhibitions, film production; production of radio and television programmes; provision of exhibition and museum facilities, performances, provision of stadium conference and exhibition services, rental of stadium facilities and sports apparatus; photographic services; lottery services; consultancy, information and advisory services relating to all of the aforesaid services
Applicant must clarify the identification of goods as follows. See TMEP §1402.01.
(1) Adopt the suggestions for the indefinite wording that is indicated below, if accurate
(2) Remove the reference to “fascias” ,“photocards”, and “crockery” or provide the common commercial name for the item. Please consider the proper classification of the good. See the ID manual for guidance.
(3) Gum guards and gum shields is not commonly known. Provide the common commercial name for the goods. Please consider the proper classification of the good. See the ID manual for guidance.
(4) Shin pads, tie back, bedding, jewelry boxes, oil skins, sleights, and provision of exhibition and museum facilities are improperly classified. Applicant may pay the additional fee or drop the class.
(5) Class 045 is improperly classified and should be class 041.
(6) Applicant must remove all duplicate entries, in particular, ornamental novelty badges and playing cards
(7) curtain holders must be removed because it is indefinite and could include rings and rails
Suggested Acceptable Identification Of Goods
Applicant may adopt the following identification of goods, if accurate: See TMEP §1402.01.
Class 009: Computer games {identify the mode of the game, e.g. discs, players}; video games {identify the mode of the game, e.g. discs, players}; computer games programs; games apparatus, namely amusement games apparatus adapted for use with an external display screen or monitor; video discs featuring {indicate the subject matter}; electronic amusement apparatus, namely {specify the common commercial name, e.g. electronic circuits recording programs for amusement apparatus for use with liquid crystal screens}; program memory cartridges for electronic amusement apparatus for use with {indicate the use/purpose, e.g. with television receivers only}; personal digital assistants with satellite communication capability; electric and electronic communication apparatus, namely {specify the common commercial name, e.g. antennas for wireless communications apparatus, aeronautical radio communication machines}; CD-ROM players; electronic, electric and/or mechanical amusement machines, namely {specify the common commercial names}; automatic slot machines; recorded video discs and video tapes featuring {indicate the subject matter}; DVD-ROM players, namely {specify the common commercial name, e.g. DVD players}; programmed-data-carrying electronic DVD-ROMs featuring {indicate the subject matter}; DVD-ROM encoded virtual reality game software; DVD-ROM encoded video game software; encoded video DVD-ROM drivers; cases adapted for CDs and DVD-ROMS; computer peripherals; optical apparatus and instruments, namely {specify the common commercial name, e.g. optical character recognition apparatus, optical inspection apparatus for industrial use}; computer software for sports or entertainment and leisure matters or football; computer programs for use in the communications field; computer programs for telecommunications; computers; computer software for {indicate the use/purpose}; computer software for personal computers for {indicate the purpose/use- please note that a good majority of software is used for personal computers}; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet, including websites, featuring {indicate the subject matter}; computer software and telecommunications apparatus, namely modems, to enable connection to databases and the Internet; computer software to enable searching of data; computer software for wireless application protocol; wireless application protocol apparatus and instruments, namely {specify the common commercial names}; computer games software and computer games consoles for use with an external display screen or monitor; games apparatus adapted for use with television receivers, namely amusement apparatus; prerecorded record albums featuring {indicate the subject matter}; blank video tapes and cassettes; blank recordable DVDs; radios; blank smart cards; electronically encoded badges and swipe cards and cards bearing machine readable information; CD-ROMs; electronic personal organizers and personal stereos; compact discs featuring {indicate the subject matter}; video cassette recorders; DVD players; apparatus and instruments for the recording, transmission or reproduction of data, sound or images; hi-fi surround sound systems; cameras, camcorders and photographic apparatus and instruments, namely {specify the common commercial name for the apparatus and instruments}; cases for photographic apparatus; calculators; telephones; mobile phones, covers, fascias and cases for mobile phones, accessories for mobile phones, namely {specify the common commercial names}; pre-paid telephone cards, magnetically encoded; sunglasses and cases for sunglasses; spectacles and contact lenses; cases for spectacles and contact lenses; audio visual teaching apparatus, namely {specify the common commercial name}; binoculars; radio alarm clocks, namely radios incorporating clocks; magnetically encoded identity cards; magnetically encoded debit cards; screens, namely {specify the common commercial names, e.g. flat panel display screens, florescent screens, LCD large-screen displays}; computer screen savers software; electronic scoreboards; magnetically encoded credit cards; computer mouse, computer mouse mats; gum guards, namely {specify the common commercial names}; gum shields, namely {specify the common commercial name}; protective clothing; protective headwear; protective helmets; protective helmets for use in sports; protective work gloves; face protectors, namely {specify the common commercial name, e.g. protective face masks not for medical purposes}; magnets; decorative magnets; magnetically encoded identification labels, namely {specify, e.g. bracelets and tags}; active electronic labels containing coded information, namely tags; encoded labels for use in marking products for identification, security or verification, namely magnetically encoded tags; magnetic labels for use in marking products for identification, security or verification; self adhesive labels, namely encoded magnetic tags
Class 012: sleighs
Class 014: jewelry boxes
Class 016: Paper, namely {specify the type of paper, e.g. blank paper notebooks, bond paper, boxes of paper}; paper products namely {specify the type of paper, e.g. blank paper notebooks, bond paper, boxes of paper}; stationery and office requisites, namely {specify the common commercial names, e.g. envelope sealing machines}; stationery products, namely {office stationery}; printed matter, namely {specify the printed matter, e.g. printed reports featuring {indicate the subject matter}, printed guides for {specify the area of use or subject matter}; printed teaching materials in the field of {specify the subject matter}; books in the field of {indicate the subject matter}; autograph books; photographs; paper bags, general purpose plastic bags; paper gift bags; wrapping material, namely {gift wrapping paper} and packing paper; printed periodical publications in the field of {indicate the field}; calendars; photographic albums; greeting cards; Christmas cards; postcards; diaries; address books; personal organizers in paper form; organizers, namely {specify the type of organizers, e.g. personal organizers, desktop organizers}; newspapers; note-pads, notebooks; newsletters; leaflets in the field of {indicate the subject matter. Please note that advertising leaflets are not goods in trade}; catalogues in the field of {indicate the subject matter}; geographical maps; paper mats for beer glasses; portraits; magazines featuring {indicate the subject matter, e.g. computers, travel}; match programs, namely {specify the common commercial name}, match tickets namely, printed tickets for {indicate the subject matter that concerns match}; brochures about {indicate the subject matter}; stickers; photocards, namely {specify the common commercial name}; photographs; albums, namely {indicate the type of albums, e.g. event, coin, photograph}; binders; desktop business card holders; cardboard packaging; posters; prints; artists' materials, namely {specify the type of material, e.g., molds for modeling clays}; paintings; engraving plates; engravings; paper knives; lithographic works of art; paperweights; pens; pencils; pen and pencil cases, erasers; rulers, namely {indicate the type, e.g. drawing rulers, ungraduated rulers, drafting rulers}; pen holders and pen clips; drawing instruments, drawing materials, namely {specify the common commercial names} and drawing sets, comprised of {indicate the composition of the set}; crayons; paper flags; book markers; chart pointers, non-electric; stencils; coasters of paper; cheque book and passport holders; table mats and table napkins of paper; removable tattoos, namely temporary tattoos; flags and pennants of paper; document holders; car bumper stickers; holders for compact discs about taxes; printed paper labels; adhesive labels; badges of paper; badges of cardboard
Class 018: oil animal skins
Class 020: Chairs, furniture namely {indicate the type of furniture, e.g. table, loveseat}, decorative wall plaques made of plastic or wood, sign boards made of {indicate the material composition}; figurines of {indicate bone, ivory, plaster, wax, wood}; plastic name badges; novelty badges, namely {police badges}; wall plaques made of plastic or wood; containers of wood and of plastic, namely {indicate use/purpose, e.g. packaging containers}; curtains of bamboo and decorative bead curtains, hooks, rails, rings, rods, rollers; plastic pennants; statuettes and figurines made of {indicate the material composition}; mirrors; picture frames; plastic key rings
Class 021: Beverage glassware, porcelain {specify the type of goods, e.g. mugs, doorknobs, sculptures}, earthenware and ceramic articles, namely {specify the type of goods, e.g. mugs, doorknobs, sculptures}, tankards, household and kitchen utensils , namely {specify the type of utensils, namely graters, spatulas, strainers} and containers; domestic household utensils, namely {specify the type of utensils, namely graters, turners, sieves}; dishes; tumblers; beer holders, namely {specify the common commercial name, e.g. beer jugs}; mugs, cups and crockery, namely {specify the common commercial name}; lunch boxes; combs, non-metal piggy banks, drinking flasks, shoe horns; beer mugs; heat insulated containers for beverages; bottle openers; badges made of glass; coasters, not of paper and other than table linen; portable coldboxes; coolers, namely ice pails; portable coolers; corkscrews; drinking glasses; flasks; ice buckets; manual mixers, namely cocktail shakers; pottery, namely {identify the goods, e.g. mug}; refrigerating bottles sold empty; table plates; tableware holders, namely for knives, forks, spoons; tableware namely knives, forks, spoons; brushes, namely {indicate the type of brush, e.g. hair brush, pet brush}; shaving brushes; shaving bowls and shaving brush stands; vases; brushes for pets; food and/or drink containers for pets, namely pet feeding dish
Class 024: Tie backs, bedding, namely {indicate the type of bedding, e.g. bed sheets}
Class 025: Clothing, namely {specify the type of clothing, e.g. pants, shirts}, headwear and footwear; clothing of leather and of imitation leather, namely {specify the type of clothing, e.g. pants, shirts}; belts ; money belts; t-shirts, polo shirts, football shirts and shorts, rugby shirts, jackets, ties, bow ties, pullovers, trousers, socks, shirts, sweaters, sweatshirts, pants, jerseys, pajamas, jumpers, waistcoats, kilts; articles of outer clothing, namely {specify the type of clothing, e.g. coats}; blazers, coats, fleece tops and fleece suits, padded jackets; rain jackets; knitwear; leisure suits; sports jerseys; sports clothing, namely {specify the type of sports clothing}; track suits, training gear, namely {specify the type of training gear}, headbands, football socks, rugby tops, rugby shorts; skirts, dresses, night dresses; dressing gowns; sleepwear; underwear; boxer shorts; sports underwear; leotards, swimwear, bathing suits, bikinis, swimming trunks, beachwear; waterproof clothing, namely {specify the type of waterproof clothing}; wax jackets, namely {specify the common commercial name}, galoshes, anoraks, wet suits; braces, namely suspenders; hats and caps; baseball caps; sandals, slippers, training shoes, boots, football boots, ski boots; gloves, mittens and scarves; cloth bibs; plastic baby's bibs; children's clothing, namely {specify the type of clothing, e.g. pants, shirts}; baby clothes, namely {specify the type of clothing, e.g. pants, shirts}; loungewear; wristbands
Class 026: Ornamental novelty badges; ornamental novelty pin badges; ornamental novelty cloth badges; other ornamental novelty badges not of precious metal or of cloth, rosettes, thimbles, ribbons, buttons; lace and embroidery; artificial flowers; buckles for clothing; heat adhesive ornamental cloth patches; hair ornaments; hair bands; clothing accessories, namely {identify the common commercial name, e.g. brooches}
Class 028: Games, namely {specify the common commercial name, e.g. arcade games}; board games; card games; playing cards; toy card games; automatic games other than coin-operated and those adapted for use with television receivers only, namely {specify the common commercial name for the game}; coin-operated video games; electronic game equipment with a watch function; hand held electronic games other than those adapted for use with television receivers only or for use with external display screen or monitor; hand held units for playing electronic games other than those adapted for use with television receivers only or for use with external display screen or monitor; stand alone video output game machines; stand alone video game machines; electronic amusement apparatus adapted for use with liquid crystal displays, namely amusement game machines, hand-held games adapted for use with dot matrix crystal displays; jigsaws; toys and playthings, namely {specify the common commercial names}; toy buses; sporting articles, namely {specify the common commercial names, e.g. spring boards}; rugby balls; balls for sport; playing balls for {indicate the type of ball, e.g. beach ball, cricket ball}; footballs; mini footballs and mini rugby balls; soft sculpture toys; teddy bears; dice; dominoes; dolls and model plastic toy figurines; flying discs; toy vehicles; masks, namely {specify, namely paper face masks} and toy masks; toy building blocks; marbles; toy mobiles; parlour games; baby rattles; spinning tops; darts; balloons; bath toys and toys for use in swimming pools, namely indicate the specific type, e.g. pool rings, arm floats for recreational use}; board games about jokes; conjuring apparatus and instruments and magicians' sets, namely {specify the common commercial name}; gymnastic and body training apparatus; body building apparatus; bar bells; dumb bells; shin guards for athletic use; knee guards for athletic use; elbow guards for athletic use; gloves for games, namely {specify, namely boxing gloves, batting gloves}; skateboards, roller skates; skating boots with skates attached; skis; surfboards, surf skis, water skis; toy scooters; paragliders; fishing rods, fishing tackle and sportsman’s fishing bags; golf clubs, golf bags and golf accessories, namely {specify the type of accessories, namely golf club grips, golf club inserts}; bags for {indicate the type of bag, e.g. hunting, ski} boots and for trainers; kites; skittles; paintball guns and paintballs; rocking horses; ornaments for Christmas trees; Christmas crackers; bob-sleighs; automatic and coin operated amusement game machines; confetti; swings, playground equipment, namely slides, climbing frames and climbing apparatus, namely article climbing walls and units; remote control toys and playthings, namely {specify the type of toy, e.g. cards, race cars, airplanes, boats}; animated toys and playthings, namely {specify the type of toy}; toys for pets; parts and fittings for all the aforesaid goods; shin pads for use in {indicate the sport};
Class 041: Sporting services, namely {specify the type of sporting service, e.g. organizing sporting events, namely triathlon}, organization of sporting events and activities, namely {indicate the type of event being organized, e.g. swimming meet, soccer competition}, recreational services, namely {specify the nature of the activity, e.g. pools, horseback riding facilities}; information relating to entertainment or sports, provided on-line from a computer database or the Internet; entertainment, live musical concerts; museum services, namely running of museums; ticket reservation services, namely arranging for ticket reservations for shows and other entertainment events; electronic games services provided by means of the Internet, namely multimedia publishing of games; club services, namely {indicate the type of club services, e.g. polo club services, golf club services}; fan club services; presentation of live performances by {indicate who performs the performances, e.g. musical band, rock groups}; music publishing services, arranging and conducting of seminars in the field of {indicate the field}; physical education, training, practical demonstrations, in the field of {indicate the field}, sport camp services; soccer schools, namely soccer camps; soccer instruction training; soccer coaching; education services in the field of {indicate the field}; education relating to sports and leisure activities, organization of sporting events, namely {indicate type of event being organized, e.g. swimming meeting} and sports competitions, organization of exhibitions for cultural or educational purposes, film production; production of radio and television programmes; entertainment in the nature of live performances by {indicate nature of the group or individual providing the entertainment}, provision of stadium conference, namely rental of stadium facilities and exhibition services, namely {specify, e.g. art exhibitions}; rental of stadium facilities and sports equipment; photographic services, namely {specify the type of service, e.g. photographic reporting}; lottery services; consultancy, information and advisory services relating to all of the aforesaid services
Class 043: provision of exhibition and museum facilities
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.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 12, 14, 16, 18, 20, 21, 24, 25, 26, 28, 41, 43. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
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 with the classes listed in ascending numerical order. TMEP § 1403.01; 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). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
Applicant Must Claim Prior Registration(s)
The following claim of ownership is added to the record:
Applicant is the owner of U.S. Registration No. 2113293, 2013996.
37 C.F.R. §2.36; TMEP §812.
The applicant must disclaim the descriptive wording “Football Club” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it describes a significant feature or characteristic of the applicant’s service and goods, namely the source or provider of the goods. A word or term that identifies the source or provider of a product or service, using only descriptive wording, is merely descriptive under Trademark Act Section 2(e)(1). See In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and skin guards); In re The Phone Co., 218 USPQ 1027 (TTAB 1983) (holding THE PHONE COMPANY merely descriptive for telephones); TMEP §1209.03(q).
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 “Football Club” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The Office may 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 may 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.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
The following cases explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).
Applicant Has Applied With A 1(b) and 44(d) Filing Basis
Unless applicant indicates otherwise, this Office will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
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.
/Nakia D. Henry/
Trademark Attorney (Law Office 111)
United States Patent and Trademark Office
Phone: (571) 272-7208
Fax: (571) 273-7208
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.