Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/172241

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Likelihood of Confusion

 

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. §1052(d).  TMEP §1105.01.

 

Dual Bases – Applicant May Rely Solely on Section 1(b)

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

Recitation of Services

 

The recitation of services is unacceptable because the nature of the services is unclear.  TMEP section 1301.05.  The applicant may adopt the following recitation, if accurate: 

 

Data processing of employee travel profiles; commercial information agencies for employers to monitor the travel profiles of employees.  International Class 35.

 

Travel information services via the internet; travel agency services, namely, making reservations and bookings for transportation; providing an online computer database in the field of travel and transportation.  International Class 39.

 

Providing electronic verification of online travel orders and reservations of digital content and generating electronic permission codes which then allow user to access said digital content.  International Class 42.

 

Travel agency services for employees, namely, making reservations and bookings for temporary lodging.  International Class 43.

 

Improper Classification of Services

 

The applicant has classified the services incorrectly.  The applicant must amend the application to classify the services in International Classes 35, 39, 42 and 43.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805, 1301.06 and 1401.

 

Requirements for Combined Application

 

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)  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

Current fees are sufficient for one class only.

 

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

 

 

/D. Beryl Gardner/

D. Beryl Gardner

Examining Attorney

Law Office 112

ecom112@uspto.gov (formal response)

beryl.gardner@uspto.gov (questions only)

703-308-9112  x180

410-997-6378

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.