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. 79286490
Mark: SEVEN STARS
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Correspondence Address: |
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Applicant: Hronek & partners s.r.o.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1533174
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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2951635 (SEVEN STARS), 3293190 (SEVEN STARS), 3632834 (SEVEN STARS SIGNATURE EVENT), 4360376 (SEVEN STARS), 4625406 (SEVEN STAR), 4345760 (SEVENSTAR), 4906497 (SEVEN STARS AWARD), 5365040 (7 STAR DREAMS), 3770489 (SEVENSTAR ACADEMY) and 4193443 (SEVEN STAR). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparing the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam , 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applicant’s mark is SEVEN STARS
The registrants’ marks are: 1) SEVEN STARS, SEVEN STARS, SEVEN STARS SIGNATURE EVENT, and SEVEN STARS, all owned by the same registrant.
2) SEVEN STAR
3) SEVENSTAR
4) SEVEN STARS AWARD
5) 7 STAR DREAMS
6) SEVENSTAR ACADEMY and SEVENSTAR, owned by the same registrant.
The applicant’s mark is the same as the registrants’ marks as to the terms SEVEN and STARS and similar as to STAR, and creates the same commercial impression. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n , 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Based on the above, the marks are confusingly similar.
Comparing the Goods/Services
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s services are: Commercial intermediation services and information for consumers, secretarial services, advertising, marketing and promotional services, management assistance for promoting business, event marketing, layout services for advertising purposes, web indexing for commercial or advertising purposes, commercial lobbying services, public relations consultancy, presentation of goods on communication media, for retail purposes, organization of fashion shows for promotional purposes, organization of exhibitions and trade fairs for business and promotional purposes, arranging and conducting of art exhibitions for commercial or advertising purposes, loyalty, incentive and bonus program services, organization and management of business incentive and loyalty schemes, organization, operation and supervision of incentive schemes, management of hotel incentive programs of others, administration of frequent flyer programs, provision of advertising space by electronic means and global information networks, rental of advertising space on-line, distribution of publicity materials, in particular flyers, prospectuses, brochures and samples, licensing of the goods and services of others, sales administration, business management of hotels, administrative data processing, human resources management and recruitment services, collection of commercial information, compilation of statistics for business or commercial purposes, market research, retail services in relation to alcoholic beverages (except beer), retail services in relation to chocolate, retail services in relation to confectionery, retail services in relation to beer, retail services in relation to beauty implements for humans, on-line retail store services relating to clothing, on-line retail services relating to clothing, administrative processing of purchase orders, goods or services price quotations, price comparison services, procurement services for others (purchasing goods and services for other businesses), mediation of agreements regarding the sale and purchase of goods, import-export agency services, price comparison rating of accommodations, commercial administration of the licensing of the goods and services of others, business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding, ordering services for third parties, on-line ordering services, provision of an on-line marketplace for buyers and sellers of goods and services, negotiation and conclusion of commercial transactions for third parties, arranging of buying and selling contracts for third parties, information services relating to jobs and career opportunities, business appraisals and analysis, business management analysis, business administration and management relating to hotels, compilation of information into computer databases, operation and business administration of shopping centres and retail stores, presentation of goods on communication media, for retail purposes, advertising, retail services in relation to beauty implements for humans
Car transport, helicopter transport, armoured vehicle transport, railway transport, turbojet airplane transport, air transport, airport services, piloting, airport passenger check-in services, arranging of transport and travel, consultancy services relating to transportation, providing information relating to air transport, provision of information relating to road transport, provision of airport facilities for aviation, chartering of marine vessels, chartering of vehicles for transportation, booking of transport via global computer networks, airline services, services for arranging transportation by air, travel and passenger transportation, agency services for arranging travel, bus transport, travel reservation, travel information, travel agency and booking services, travel consultancy and information services, bus transport, transportation of passengers by boat, cruise ship transport services, escorting of travellers, transport of passengers by air, booking of seats for travel, arranging and booking of travel for package holidays, organizing and arranging travel, tour guide and excursion services, arranging of business travel, arranging of transportation for travel tours, arranging travel tours as a bonus program for credit cards customers, passenger train transport, planning and booking of travel and transport, computerised reservation services for travel, travel consultancy, providing information relating to travel and transport via electronic means, provision of tourist travel information, provision of transport for passengers by water, provision of transport for passengers by air, provision of tours, ground support passenger handling services, transport of travellers by land, priority boarding, check-in, seating and reservation services for frequent air travellers, transport of passengers by cruise ships, booking and arranging of access to airport lounges, booking of travel through tourist offices, seat reservations for various forms of transport, booking of seats for travel, reservation services for airline travel, reservation services for travel by land, driving services, agency services for arranging the transportation of persons, travel agency services, arranging and booking of excursions and sightseeing tours, travel tour guide services, personal travel tour guide services, services for the arranging and booking of tours, aircraft parking services, booking of airport parking
Entertainment and sports, booking services for concert tickets, theatre productions, arranging and conducting of congresses, organization of fashion shows for entertainment purposes, organization of golf competitions, organization of competitions and awards, organization of conferences, exhibitions and competitions, arranging and conducting of conferences, arranging and conducting of symposiums, arranging and conducting of competitions (education or entertainment), organization of exhibitions for cultural or educational purposes, organization of professional golf tournaments or competitions, organization of competitions, organization of competitions (education or entertainment), arranging of conferences, arranging of lectures, arranging of competitions for education or entertainment, gambling services, audio, video and multimedia production and photography, fitness club services, instruction courses relating to sporting activities, horse riding schools, health club services (health and fitness training), golf fitness instruction, conducting of sports events, organising of horse jumping events, organization of horse races, organization of sports competitions, organising of sporting activities and of sporting competitions, beach and pool clubs, arrangement of professional golf tournaments, providing golf facilities, providing fitness and exercise facilities, providing facilities for sports events, horse shows and exhibitions, providing golf playgrounds, provision of facilities for horse-race meetings, rental of sports equipment (except vehicles), recreational services relating to skiing, recreational services relating to horse riding, lending library services, translation and interpretation services, organization of lotteries, providing casino facilities (gambling), tutoring at cram schools, consultancy services relating to the training of employees, coaching in economic and management matters, modelling for artists, wine tastings (educational services), training relating to the restaurant industry, vocational education and training services, television entertainment, cabarets, theatre services and entertainment services relating to music, dancing, comedy, dramas and magic, amusement park and theme park services, gaming-houses, amusement centers, providing recreation facilities, production of videos, cinematographic films and audio tapes, theatrical ticket agency services, training of hotel management, providing on-line publications, on-line publication of electronic books and journals, consultancy, information and advisory services relating to all aforementioned services
Temporary accommodation, hotels, hostels and boarding houses, providing information about temporary accommodation services, provision of information relating to the booking of accommodation, providing event facilities and temporary office and meeting facilities, rental of temporary accommodation, booking of temporary accommodation via the Internet, temporary accommodation reservations, travel agency services for booking accommodation, travel agency services for arranging accommodation, appraisal of hotel accommodation, booking of hotel accommodation, hotel services for preferred customers, information relating to hotels, consultancy services relating to hotel facilities, provision of hotel accommodation, providing accommodation in hotels and motels, booking of hotel accommodation, travel agency services for making hotel reservations, retirement home services, preschooler and infant care at daycare centers, arranging of wedding receptions (venues), providing conference rooms, providing convention facilities, provision of conference facilities, providing banquet and social function facilities for special occasions, pet boarding services, rental of chairs, tables, table linen, glassware, bar services, restaurant information services, café services, serving of alcoholic beverages, serving food and drinks, arranging of wedding receptions (food and drink), provision of information relating to the preparation of food and drink, provision of information relating to restaurants, providing reviews of restaurants, providing accommodation for special occasions, restaurant services, fast food services, self-services restaurants, agency services for reservation of restaurants, travel agency services for booking restaurants, provision of food and drink, wine tasting services (provision of beverages), personal chef services, providing food to needy persons [charitable services], food and drink catering, provision of facilities and equipment, all for the purposes of meetings, conferences, seminars and banquets, provision of temporary accommodation in hotels and boarding houses, providing branded residences (temporary accommodation)
The registrant’s goods/services are:
1) Customer loyalty services for casinos for promotional and/or advertising purposes, namely, frequent customer reward program service which allows participants to earn discounts and free gifts; Customer loyalty services for casinos for promotional and/or advertising purposes, namely, frequent customer reward program service which allows participants to earn discounts and free gifts; Casino services featuring discounts and complementary services for frequent patrons through the use of an identification card; Hotel and restaurant services featuring a frequent guest reward program with added features which allows participants to earn free or discounted lodging, meals and other travel-related benefits;
2) footwear
3) Arrangements for transportation of boats, pleasure yachts and aircraft by land, sea and air; Transport of vehicles; boat transport; marine transport of pleasure yachts; transport of aircraft; freight transportation by ship of boats, pleasure yachts and aircraft via water
4) Providing independent ratings and reviews of other businesses for commercial purposes
5) Business consulting, business management and providing information in the music business field
6) Education services, namely, providing live and on-line courses in the field of Christian education; Education services, namely, providing live and on-line courses in the field of Christian education
The applicant’s services are broadly worded and are likely to include many of the registrants’ goods and services. For example, “ retail services in relation to alcoholic beverages (except beer)” would include wine and retail stores often feature wine under the same name. Also, “on-line retail store services relating to clothing” includes footwear and retail stores often feature footwear under the same name. The services are also identical as to some because cars are a type of vehicle, so the registrant’s “transport of vehicles” services would include the applicant’s car transport and armoured vehicle transport services. Thus, the services are very closely related as to some and the same as to others.
The attached Internet evidence, consisting of 3rd party webpages, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and markets the goods and services under the same mark, the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, the goods and services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
See Adidas online clothing and footwear: http://www.adidas.com/us
See online retail store featuring wine: http://www.moet.com/en-us
See auto transport services – http://www.montway.com/door-to-door-auto-transport
See Marriott hotel with restaurants and loyalty program: http://www.marriott.com/loyalty.mi
See Caesars Palace Hotel, Casino and other entertainment services - http://www.caesars.com/caesars-palace
See educational classes with academic competitions - http://www.sonoranschools.org/Competitions.aspx
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
Thus, the goods and services are closely related as to some and the same as to others.
Therefore based on the above, the mark is refused registration under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
The wording in the identification of services is indefinite and must be clarified to determine the nature of the services.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Classes 35, 39, 41 and 43 only, the classes specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following wording in International Classes 35, 39, 41 and 43, if accurate:
Class 35 - Commercial intermediation services advice and information for
consumers in the choice of products and services; secretarial services; advertising, marketing and promotional services; management assistance for promoting business;
arranging and conducting special event marketing for others; layout services for advertising purposes; record management
services, namely, document web indexing on the web for others, for commercial or advertising purposes; commercial lobbying services; public relations
consultancy; presentation of goods on communication media, for retail purposes providing television home shopping services in the field of general consumer
merchandise; organization of fashion shows for promotional purposes; organization of exhibitions and trade fairs for business and promotional purposes; arranging and conducting of art
exhibitions for commercial or advertising purposes; loyalty, incentive and bonus program services through issuance and processing of loyalty points for purchase of company’s goods
and services; organization and management of business incentive and loyalty schemes programs for others; organization, operation and
supervision management of [specify nature of business, e.g., grocery store] incentive schemes programs of
others; management of hotel incentive programs of others; administration of frequent flyer programs; provision of advertising space by electronic means and global information networks; rental
of advertising space on-line; promotional services, namely, distribution of publicity materials, in particular namely, flyers, coupons, catalogs and promotional items of others prospectuses, brochures and samples; commercial
administration of the licensing of the goods and services of others; business administration services for the processing of sales administration made on the internet; business management of hotels; administrative data processing; human resources management and personnel recruitment services; collection of commercial information agency services; compilation of statistics for
business or commercial purposes; market research; retail store services in relation to featuring alcoholic
beverages except beer; retail store services in relation to featuring chocolate;
retail store services in relation to featuring confectionery; retail store services
in relation to featuring beer; retail store services in relation to featuring beauty implements for humans; on-line retail store services relating to featuring clothing; [duplicated wording which may be deleted: on-line retail services relating to clothing]; administrative processing of purchase orders;
goods or services price quotations; price comparison services; procurement services for others namely, purchasing [specify the “goods and services”
e.g., weapons, office furniture] for other businesses; mediation of agreements regarding the sale and purchase of goods; import-export agency services; price comparison rating of
accommodations; commercial administration of the licensing of the goods and services of others; business intermediary services relating to the matching of potential private investors with
entrepreneurs needing funding; [specify type of “ordering” e.g., wholesale] ordering services for third parties in the field of [indicate
field]; on-line ordering services featuring [indicate field or type of goods]; provision of an on-line marketplace for buyers and sellers of goods and services;
negotiation and conclusion of commercial transactions for third parties; arranging of buying and selling contracts for third parties; information services relating to jobs and career opportunities;
business appraisals and analysis; business management analysis; business administration and management relating to hotels; compilation of information into computer databases; business operation and business administration of shopping centres and retail stores; [duplicated wording which may be deleted:
presentation of goods on communication media, for retail purposes”]; [duplicated wording which may be deleted: “advertising,” “retail services in relation to beauty implements for humans”]
Class 39 - Car transport; helicopter transport; armoured vehicle transport; railway transport; turbojet
airplane transport; air transport; airport services; piloting; airport passenger check-in services; arranging of transport and travel for others; consultancy services
relating to transportation; providing information relating to air transport; provision of information relating to road transport; provision of airport facilities for aviation; chartering of marine
vessels; chartering of [specify “vehicles” being chartered, e.g., yachts, planes, buses] for transportation; booking of transport via global computer networks; airline
services; services for arranging transportation by air; traveler and passenger transportation; agency services for arranging transport for
travelers; bus transport; travel ticket reservation; travel information; travel agency services, namely, making reservation and booking for transportation services; travel consultancy and information
services; bus transport; transportation of passengers by boat; cruise ship transport services; escorting of travelers; transport of passengers by air; booking of seats for travel; arranging and
booking of transport for travelers for package holidays; organizing and arranging travel visas for personal traveling abroad; providing transport for guided tours guide and excursion services; arranging transport for of
business travel; arranging of transportation for travel tours; arranging transport for traveler tours as a bonus program for credit cards customers; passenger train
transport; [duplicated wording which may be deleted: “planning and booking of travel and transport”]; computerised reservation services for transport of travel; transportation for travel consultancy; providing information relating to travel and transport via electronic means; provision of
tourist travel information; provision of transport for passengers by water; provision of transport for passengers by air; provision of transport for guided tours; ground
support passenger handling services, namely, shuttle services between the airport and parking facilities as the airport; transport of travellers by land; priority
boarding, check-in, seating and reservation services for frequent air travelers; transport of passengers by cruise ships; booking and arranging of access to airport lounges, namely, airport services featuring transit lounge facilities for passenger relaxation; booking of seats for travel
through tourist offices; seat reservations for various forms of transport; booking of seats for travel; airline ticket reservation services for airline travel;
reservation services for transportation for travel by land; vehicle driving services; agency services for arranging the transportation of
persons; travel booking agency services; arranging and booking of transportation for excursions and sightseeing tours; providing transport for travel tour guide services; providing transport for personal travel tour guide services;
services for the arranging and booking for transportation of tours; aircraft parking services; booking of reservation at airport
parking
Class 41 - Entertainment and sports, namely [specify, e.g., baseball games];
booking services for concert tickets; theatre productions; arranging and conducting of educational congresses; organization of fashion shows for entertainment purposes;
organization of golf competitions; organization of sports competitions and incentive awards programs to encourage
frequent exercise; organization of conferences, exhibitions and competitions for [indicate educataional, cultural, sporting or entertainment purposes]; arranging
and conducting of educational conferences; arranging and conducting of educational symposiums in the field of [specify,
e.g., medical science]; arranging and conducting of educational and entertainment competitions in the field of
[specify type of entertainment, e.g., weight lifting](education or entertainment); organization of exhibitions for cultural or educational purposes; organization
of professional golf tournaments or competitions; organization of competitions in the field of [specify, e.g., wrestling]; [duplicated
wording which may be deleted: “organization of competitions (education or entertainment)”]; arranging of educational conferences; educational
services, namely, arranging of lectures in [specify field, e.g., personal awareness]; arranging of competitions for education or
entertainment, namely, [specify field, e.g., chess]; gambling services; audio, video and multimedia production and photography; physical
fitness club services; instruction courses relating to sporting activities, namely, baseball; horse riding schools; health club services featuring health and fitness training; golf fitness instruction; conducting of sports events, namely, [specify, e.g., triathalons]; organising of
horse jumping events; organization of horse races; organization of sports competitions; organising of sporting activities and of sporting competitions, namely, [specify, e.g.,
football games]; beach and pool clubs, namely, providing private swimming; arrangement of professional golf tournaments; providing golf facilities; providing
fitness and exercise facilities; providing facilities for sports events; horse shows and exhibitions; providing golf playgrounds; provision of facilities for horse-race meetings; rental of sports
equipment, except vehicles; recreational services relating to namely, skiing facilities; recreational services relating to namely, horse riding; lending library services; translation and language interpretation services; organization of lotteries; providing casino facilities for gambling; tutoring at cram
schools; consultancy services relating to the training of employees; coaching in economic and management matters; modelling for artists; wine tastings as educational
services; training relating to the in the restaurant industry; vocational education and training services in the
field of [specify field, e.g., mechanics, computers]; television entertainment, namely, ongoing comedy program; cabarets; theatre services and entertainment
services relating to namely, live music, dancing, comedy, dramas and magic; amusement park and theme park services; gaming-houses,
namely, providing facilities for playing laser tag games; amusement centers; providing recreation facilities; production of videos, cinematographic films and audio tapes;
theatrical ticket agency services; training of hotel management; providing on-line publications in the nature of [indicate specific nature of publication] in the field of
[indicate subject matter of publication]; on-line publication of electronic books and journals in the field of [specify]; consultancy, information and advisory
services relating to all aforementioned services
Class 43 – providing temporary accommodation ; hotels, hostels and boarding
house services; providing information about temporary accommodation services; provision of information relating to the booking of accommodation; providing event social function facilities and [“temporary office” seems to identify services in Class 35] and social meeting facilities; rental of temporary accommodation; booking of temporary accommodation via the Internet; temporary accommodation reservations; travel agency services for booking hotel accommodation; travel agency services for arranging temporary accommodation; [clarify “appraisal of hotel accommodation” to identify services in Class 43]; booking of hotel accommodation; hotel services
for preferred customers; information relating to hotels for travel; consultancy services relating to accommodations at hotel facilities;
provision of hotel accommodation; providing accommodation in hotels and motels; booking of hotel accommodation; travel agency services for making hotel reservations;
retirement home services; preschooler and infant care at daycare centers; arranging of rental of wedding receptions venues; providing conference rooms; providing convention facilities; provision of conference facilities; providing banquet and social function facilities for special occasions;
pet boarding services; rental of chairs, tables, table linen, glassware; bar services; restaurant information services; café services; serving providing of alcoholic beverages; serving food and drinks; arranging of providing food and drink for wedding receptions
(food and drink); provision of information relating to the preparation of food and drink; provision of information relating to restaurants; providing reviews of
restaurants; providing temporary accommodation for special occasions; restaurant services; fast food restaurant services; self-services
restaurants; agency services for reservation of restaurants; travel agency services for booking restaurants; provision of food and drink; providing
drink in the nature of wine for wine tasting services (provision of beverages); personal chef services; charitable services, namely,
providing food to needy persons [charitable services]; food and drink catering; [clarify “provision of facilities and equipment,
all for the purposes of meetings, conferences, seminars and banquets” providing facilities for business meetings is in Class 35. Applicant may adopt: “providing of
social meeting banquet and social function facilities” or “providing general purpose facilities for social gatherings, parties and business meetings in community centers”]; [duplicated wording which may be deleted: “provision of temporary accommodation in hotels and boarding houses”]; providing temporary accommodations at branded residences (temporary accommodation)
Applicant must list the goods and/or services by international class. TMEP §§801.01(b), 1403.01.
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.
MARK DESCRIPTION
Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Therefore, applicant must provide this description. See TMEP §807.07(a)(ii).
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: “The mark consists of the following: the words SEVEN STARS with the “V” extending outward above and over the word SEVEN and the “A” extending below and under the word STARS, all in gold.”
U.S. LICENSED ATTORNEY REQUIRED
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
How to respond. Click to file a response to this nonfinal Office action.
Andrea D. Saunders
/Andrea D. Saunders/
Trademark Attorney
Law Office 117
571-270-3856
Andrea.Saunders@uspto.gov
RESPONSE GUIDANCE