UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79150705
MARK: TIVOLI
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: TIVOLI A/S
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1098359
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES that applicant must address:
IDENTIFICATION OF SERVICES
Class 35
Class 41
The wording “in connection with planning, design, construction and operation of amusements and amusement parks” in the identification of services is indefinite and must be clarified because it is not clear “in connection with” refers to the fields or subject matters and may be interpreted as including other services that are not in the class indicated. Applicant should amend “in connection with” to “in the field of.” Additionally, it is not clear what the nature of “amusements” is. Therefore applicant should clarify the nature of amusements. See TMEP §1402.01.
Class 42
The wording “in connection with planning, design, construction and operation of amusements and amusement parks” in the identification of services is indefinite and must be clarified because it is not clear “in connection with” refers to the fields or subject matters and may be interpreted as including other services rather than the subject matter. Furthermore, architectural services, design and engineering services for design and planning is not grammatically clear. Applicant should amend “in connection with” to “in the field of;” and delete “planning and design” from the subject matter. Additionally, it is not clear what the nature of “amusements” is. Therefore applicant should clarify the nature of amusements. See TMEP §1402.01.
The subject matter of the technical consulting service determines the classification of that service. Amusement parks and amusement park rides belong in Class 28. However, amusement park engineering services belong in Class 42. Thus, applicant should clarify the wording by specifying a Class 42 subject matter.
Applicant may substitute the following wording, if accurate (additions are shown in bold and deletions are shown as strikethrough text):
Class 35
Advertising services; business management; business administration services; providing office functions, all the afore-mentioned services in connection with the field of planning, design, construction and operation of amusements
being in the nature of {clarify what amusements refers to, e.g., rides}and amusement parks
Class 41
Educational services, namely, conducting {indicate specific mode of instructions, e.g., classes, seminars,
conferences, workshops} in the fields of planning, design, construction and operation of amusements and amusement parks; entertainment, and providing of training in the
field of connection with planning, design, construction and operation of amusements and amusement parks; entertainment in the nature of {indicate specific event or act,
and field, e.g. live performance by a musical group, television comedy series, ethnic festival}; sporting and cultural activities, namely, {specify the types of sports and
cultural activities, e.g., organization of sports competitions, organization of cultural shows}
Class 42
Architectural services and, design services, as well as engineering services
in connection with the field of planning and design of amusements and amusement parks; construction drafting in relation to amusements being in the nature of {clarify what amusements refers to, e.g., rides} and amusement parks; technological consultancy in connection with amusements being in
the nature of { clarify what amusements refers to, e.g., rides} engineering and engineering of amusement parks; Architectural
services and, design services, as well as engineering services in connection with the field of shopping centres and
restaurants
An applicant may only amend an identification to clarify or limit the service, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant should note the additional requirement below.
CLAIM OF OWNERSHIP OF REGISTRATIONS
Applicant may use the following format to claim ownership of the registration:
Applicant is the owner of U.S. Registration No. 3639556.
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§711, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Kathy Wang/
Trademark Examining Attorney
Law Office 108
571-272-7906
kathy.wang@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.