UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/677424

 

FINAL OFFICE ACTION

 

The applicant’s response has been received. The signed declaration is acceptable. The cited registrations have been withdrawn. The applicant has added four classes to the application which is acceptable. However, the following issues remain with regard to the recitation of services and are made final.

 

Recitation of Services

 

The wording referenced below in the identification of services needs clarification because it remains unacceptable.  The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of services.

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

Class 36

 

The wording “and operation” is unacceptable since it is unclear what these services refer to. The applicant must clarify this or delete these terms. The applicant may use the following, if accurate:

 

“Apartment condominium and real estate management services; real estate brokerage services, financing and management services for condominium, fee simple and fractional ownership residential units; real estate management, namely, management of time share properties, condominium properties, and other residential properties.” International Class 36.

 

Class 41

 

The wording “social clubs” is not acceptable without clarification since these terms are too vague and could include services in classes other than class 41. Country clubs are in class 41 as previously stated. The applicant must clarify the nature of the services. Also, the wording “financing, management and operation services” is unacceptable in class 41 and suggests the applicant is providing services in other classes. This appears to be an error but this wording must be deleted from the class 41 listing of services. The applicant may use the following, if accurate:

 

“Residential clubs, namely, country clubs; providing facilities for recreational activities, namely, golf, tennis, bicycling and water sports; physical fitness consultation services; country club services.” International Class 41.

 

The listing of services is acceptable for classes 35, 37, 43, and 44.

 

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.

 

 

 

ADDITIONAL FEES – INTENT TO USE APPLICATION

 

 

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

 

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.

 

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; and

 

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

 

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

 

 

APPLICANT’S OPTIONS

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Commissioner if permitted by 37 C.F.R. Section 2.63(b). 37 C.F.R. Section 2.64(a).  Regarding petitions to the Commissioner, see 37 C.F.R. Section 2.146; TMEP sections 1702 and 1704.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

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

 

 

 

/rebecca smith/

Rebecca Smith

U.S. Patent & Trademark Office

Law Office 110

(571) 272-9223

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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