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. 79203974
MARK: DWELL
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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: Centurion Corporation Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1336257
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).
Applicant must respond to the following requirements.
SUMMARY OF ISSUES:
1. POTENTIAL REFUSAL – Prior Pending Application
2. REQUIREMENT – Identification of Services
ISSUES:
POTENTIAL REFUSAL – PRIOR PENDING APPLICATION
The filing date of pending U.S. Application Serial No. 87078528 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.
In addition, with respect to International Class 36, the applicant must specify the type of “real estate affairs,” “accommodation”, “accommodation bureaux,” and property services suggested by “property portfolio management,” that are actually contemplated. Similarly, with respect to Class 43, the applicant must specify whether its “accommodation” services are “temporary accommodations” such that the services fall within the scope of International Class 43. Finally, the nature of the “arranging of meals” services must be made clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade.
Applicant may adopt the following identification, if accurate:
International Class 36
Management of real estate, apartments and buildings; real estate affairs , namely, real estate agency services; renting or leasing of apartments, residential condominiums within hotel developments accommodation and real estate; accommodation bureau, namely, renting of apartments; real estate investment services; real estate investment management; and real estate investment property portfolio management.
International Class 43
Accommodation bureaux in the nature of boarding house services; agency services for the reservation of temporary accommodation; arranging of temporary accommodation; arranging of meals, namely, making reservations for meals at restaurants; boarding house services; making boarding house bookings; cafeteria services; canteen services; consultancy and advisory services relating to the provision of temporary accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; rental of cooking apparatus; provision of temporary accommodation; temporary accommodation reservations.
An applicant may only amend an identification to clarify or limit the services, 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 your convenience, acceptable identifications of goods and services are available on-line at http://tess2.gov.uspto.report/netahtml/tidm.html.
DOMESTIC PRO SE APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Nevertheless, there are online resources that you may find helpful in efforts to maintain and protect your mark as you navigate the Trademark application and registration process:
TEAS Nuts and Bolts Videos
http://www.gov.uspto.report/trademarks/process/TEAS_Nuts_and_Bolts.jsp
Answers to Common Questions About Trademark Litigation
http://www.gov.uspto.report/trademarks/toolkit_home.jsp
As noted web pages, the information presented in connection therewith does not constitute legal advice. It should not be considered to replace advice from an attorney. Reference to any specific organizations, attorneys, law firms, corporations, or websites does not constitute the USPTO’s endorsement or recommendation.
STATUS UPDATE INFORMATION
The applicant may view and download any or all documents contained in the electronic file wrapper of its OWN and all other pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at:
http://tmportal.gov.uspto.report/external/portal/tow.
If the applicant seeks STATUS information after the application has left the examining attorney’s jurisdiction as a result of an approval or abandonment, the applicant should use the following link, which contains the same information to which the examining attorney has access:
http://www.gov.uspto.report/trademarks/TARR.jsp
For a graphical timeline pertaining to 1(a), Use-based applications, use the following link:
http://www.gov.uspto.report/trademarks/process/tm_sec1atimeline.jsp
For a graphical timeline pertaining to 1(b), Intent-to-Use applications, use the following link:
http://www.gov.uspto.report/trademarks/process/tm_sec1btimeline.jsp
Other graphical timelines may be viewed via the following link:
http://www.gov.uspto.report/trademarks/process/tm_timeline.jsp
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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 U.S. commonwealths or U.S. territories. 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.
/Ronald E. Aikens/
Trademark Examining Attorney
US Patent & Trademark Office
Law Office 112
Ron.Aikens@USPTO.gov
Wk: 571-272-9268
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.