UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/783199
APPLICANT: Venetian Casino Resort, LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PAIZA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 86690.1137.3
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/783199
The assigned examining attorney has reviewed the referenced application and determined the following.
SEARCH OF THE OFFICE RECORDS
The trademark 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. Section 1052(d). TMEP section 1105.01.
INFORMALITIES
Before the application can be considered further, the following informal issues must be addressed.
The wording “humidors, cigarette lighters, and matchboxes not of precious metal” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “Class 34 - humidors, cigarette lighters and matchboxes not of precious metal ” if accurate. TMEP §1402.01. Please note: The comma (,) after the term lighters has been deleted. Otherwise, the term CIGARETTE LIGHTERS is indefinite and opens up the possibility of a multi-class application in Class 14 and 34 namely, cigarette lighters of precious metal – Class 14; and cigarette lighters not of precious metal – Class 34.
In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
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.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
The applicant must indicate whether PAIZA has any significance in the relevant trade, any geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.61(b).
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09.
The current specimen of record comprises a swizzle stick and a coaster on which the mark appears and is unacceptable as evidence of actual trademark use because it does not show use of the mark with the Class 34 goods, namely, humidors, cigarette lighters, and matchboxes not of precious metal. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
If the applicant cannot comply with the requirement for submitting a new specimen for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a 1(b) Intent to Use basis.
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
If the applicant is the owner of Registration Nos. 2999280 and 2999279, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
NOTE:
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/William H. Dawe, III/
Trademark Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
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.