Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1509022

 

 

Notice of Provisional Full Refusal

 

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

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:

• Requirement – U.S. Counsel
• Requirement – Disclaimer
• Requirement – Amend Identification of Services

 

 

REQUIREMENT – U.S. COUNSEL

 

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

 

REQUIREMENT – DISCLAIMER

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “CLUB” because it is not inherently distinctive.  These unregistrable term at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from LEXICO (Oxford Dictionary) shows this wording means “An organization or facility offering members social amenities, meals, and temporary residence”.  Thus, the wording merely describes applicant’s services because applicant is an organization that provides recreation, amusement and entertainment facilities, and social amenities such as amusement arcade services and organizing entertainment and sports events and exhibitions, as specified in the identification of services.

 

A mark does not need to be merely descriptive of all the goods or services specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’”  In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CLUB” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

REQUIREMENT – AMEND IDENTIFICATION OF SERVICES

 

The wording “film sand” and “exhibition sand” in the identification of services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “films and” and “exhibitions and.”

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 41 for “providing recreation facilities.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Finally, the wording “providing on-line publications” in the identification of services is indefinite and must be clarified because it does not specify the nature or subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant may adopt the following identification of services, if accurate: 

 

Class 41:         Entertainment in the nature of air shows, dance performances, fashion shows, gymnastic performances, magic shows, live visual and audio performances by actors and musicians, and live musical, variety, news and comedy shows; movie showing; production and distribution of movies, radio programs and television shows; rental of motion pictures and sound recordings; production of sound and music video recordings; animation production services; presentation of live show performances; rental of videotapes; publishing of electronic publications; entertainment services in the nature of creation, development, and production of television programming; providing information and articles in the field of film, filmmaking, and entertainment via a global computer network; provision of non-downloadable films and movies via a video-on- demand service; electronic games services provided by means of the internet; multimedia publishing of books, magazines and electronic publications in the fields of cinema, music and video games; providing on-line entertainment information regarding games, music and films; booking of entertainment halls; providing amusement and recreation facilities; children's entertainment, namely, live clown shows; holiday camp services; amusement park and theme park services; amusement arcade services; zoological garden services; entertainment in the nature of a water park and amusement center; entertainment services in the nature of an amusement park show; organizing cultural and arts events; organization of sports competitions; ticket agency services for entertainment and sporting events; entertainment event booking agencies; booking of seats for shows and booking of theatre tickets; entertainment information; information relating to entertainment provided on-line from a computer database or the internet; rental of amusement machines and apparatus; organizing live exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; arranging of contests; entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; theater productions; providing information relating to organizing community sporting and cultural activities; providing recreation facilities; teaching in the field of music; animal, business and it training services; personal fitness training services; conducting workshops and seminars in the field of cartoons, production of cartoons, creating cartoons and shows; providing recreation facilities; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; nutrition instruction; publication of books, magazines, almanacs and journals; providing on-line publications in the nature of {indicate specific nature of publication, e.g., e-books, news articles, magazines} in the field of {indicate subject matter of publication, e.g., music, nutrition}

 

See TMEP §1402.01.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.  See TMEP §1402.04.

 

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

How to respond.  Click to file a response to this nonfinal Office action.    

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@uspto.gov