Offc Action Outgoing

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and

(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.

37 C.F.R. §10.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

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

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Claim of Ownership

If applicant is the owner of U.S. Registration Nos. 3,197,001; 3,196,965; 3,242,863; and others, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:

Applicant is the owner of U.S. Registration Nos. 3,197,001; 3,196,965; 3,242,863; and others.

Identification and /or Classification of Services

The identification of services is unacceptable as indefinite and/or misclassified.

CLASS 39

The wording “transport, packaging, and storage of goods” is indefinite. The applicant must specify the means of “transport,” that the “packaging” is “for transporation” and the nature of the goods or “general goods.” The applicant may adopt the following, if accurate:

Transportation of goods by rail, air, boat, and truck; Packaging of goods for transport; storage of general goods.

The wording “freighting” is indefinite. The applicant must list the nature of the freighting services, for example, “freight forwarding services”

The wording “storage of goods” is indefinite. The applicant must specify the nature of the goods or “general goods.” For example, “storage of general goods” is acceptable.

The wording “transport and storage information” is indefinite. The applicant must insert “providing” before “transport and storage information”

The wording “navigation services” is indefinite. The applicant must specify the type of navigation services, for example, “Aeronautical radio navigation services”

The wording “travel agency services with the exception of hotel and boarding-house reservations” is indefinite. The applicant must specify the exact nature of the travel agency services, for example:

Travel agency services, namely, making reservations and bookings for transportation, in Class 39.

CLASS 41

The wording “entertainment” is indefinite. The applicant must list the exact nature of the entertainment services, for example, “Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows”

The wording “health clubs” is indefinite. The applicant must specify the nature of the services provided by the health clubs, for example:

Health club services, namely providing instruction and equipment in the field of physical exercise, in Class 41.

The applicant must amend “casino (game) services to delete “(game)” since parentheses are not permitted in the identification. The applicant may amend to the following, which is acceptable in the Trademark ID Manual:

“casinos” in Class 41.

The wording “arranging and conducting of conferences and conventions” is indefinite. The applicant must specify that these are “educational conferences and conventions” since arranging and conducting “business” conferences and conventions are in a different class. The applicant may adopt the following, if accurate:

Arranging and conducting of educational conferences and conventions, in Class 41.

The wording “show performances” is indefinite. The applicant must specify the exact nature of the services involving the show performances, for example:

“Presentation of live show performances,” in Class 41.

The wording “leisure services” is indefinite. The applicant must list the exact nature of the leisure services, for example:

“Providing information, news and commentary in the field of recreation and leisure activities,” in Class 41.

CLASS 43

The wording “and provision of food and drink on land and on pleasure boats” is indefinite. The applicant must specifiy the exact nature of the provision of good and drink, for example:

“Restaurant services, namely, provision of food and beverages on land and on pleasure boats,” in Class 43.

The wording “reservation and accommodation services on pleasure boats” is indefinite. The applicant must specify the exact nature of the reservation and accommodation services, for example:

“Services for the reservation of rooms on pleasure boats; and Providing temporary accommodations on pleasure boats”

TMEP §1402.01.

For further assistance regarding an acceptable listing of goods and/or services and the proper classification of goods and services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://tess2.gov.uspto.report/netahtml/tidm.html.

Additions to Identification Not Permitted

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

New Classes/Movement Between Classes Not Permitted

Also, please note that international classification of goods and/or services in applications filed under §66(a) of the Trademark Act cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization. Guide to Implementation of Madrid Protocol in the United States, Exam Guide 02-03, section IV.B2. An applicant may not add a new class or move goods and services between existing classes.

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

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.