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: Knobbe, Martens, Olson & Bear, LLP
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Applicant: Hronek & partners s.r.o.
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Reference/Docket No. BRDCZ6.001IU
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 05, 2021
International Registration No. 1533174
This Office action is in response to applicant’s communication filed on February 2, 2021.
In a previous Office action(s) dated August 10, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): amend the identification of services, provide a mark description, and appoint a U.S. licensed attorney.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: mark description and U.S. licensed attorney appointed. See TMEP §§713.02, 714.04.
In addition, based on the amended identification of services, the following refusal(s) and/or requirement(s) have been withdrawn: Section 2(d) Refusal citing Registration Nos. 3293190 (SEVEN STARS), 3632834 (SEVEN STARS SIGNATURE EVENT), 4360376 (SEVEN STARS), 5365040 (7 STAR DREAMS), 3770489 (SEVENSTAR ACADEMY) and 4193443 (SEVEN STAR). See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION – REGISTRATION NOS. 2951635 (SEVEN STARS), 4625406 (SEVEN STAR), 4345760 (SEVENSTAR), 4906497 (SEVEN STARS AWARD)
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.
The applicant argued that the services are distinguishable, the purpose and functions of the services are distinguishable, and the applicant’s mark differs in connotation and meaning. Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
COMPARISON OF 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).
In this case, the applicant’s mark is SEVEN STARS stylized.
The cited registered marks are:
1) SEVEN STARS
2) SEVEN STAR
3) SEVENSTAR
4) SEVEN STARS AWARD
Regarding Registration No. 2951635 (SEVEN STARS), the marks are identical as to the terms SEVEN STARS. The applicant’s addition of the stylization or design is insufficient to distinguish the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Also, because the registrant’s mark is in standard characters, the registrant is free to display it’s mark in any stylization in the marketplace. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Thus, the marks are confusingly similar.
Regarding Registration Nos. 4625406 (SEVEN STAR) and 4345760 (SEVENSTAR), the applicant has merely adopted the plural form of the registrants’ marks, but the commercial impression is the same. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark)
Therefore, the marks are confusingly similar.
Regarding Registration No. 4906497 (SEVEN STARS AWARD), the applicant’s mark is the same as to the first two terms SEVEN STARS. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
The applicant has merely deleted the descriptive term AWARD, but the marks are similar sound and commercial impression because the first terms are identical. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Based on the above, the cited marks are confusingly similar.
Comparison of Goods/Services
The applicant’s services are:
Class 35 - Commercial 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 indexing on the web for others, for commercial or advertising purposes; commercial lobbying services; public relations consultancy; 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; provision of advertising space by electronic means and global information networks; rental of advertising space on-line; promotional services, namely, distribution of publicity materials, namely, flyers, coupons, catalogs and promotional items of others; commercial administration of the licensing of the goods and services of others; business administration services for the processing of sales made on the internet; business management of hotels; data processing; human resources management and personnel recruitment services; commercial information agency services; compilation of statistics for business or commercial purposes; market research; retail store services featuring alcoholic beverages except beer; retail store services featuring chocolate; retail store services featuring confectionery; retail store services featuring beer; retail store services featuring beauty implements for humans; on-line retail store services featuring clothing; administrative processing of purchase orders; goods or services price quotations; price comparison services; 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; 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; providing temporary offices
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 business jets 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; travel consultancy and information services; bus transport; 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 and excursion services; arranging transport for business travel; arranging of transportation for travel tours; arranging transport for traveler tours as a bonus program for credit cards customers; 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 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; 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 tour guide services; providing transport for personal tour guide services; services for the arranging and booking for transportation of tours; aircraft parking services; booking of reservation at airport parking; all afore services not related to transportation by water, transportation of ships and airfreight
Class 41 - Booking services for concert tickets; 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 entertainment purposes; organization of exhibitions for cultural or educational purposes; organization of professional golf tournaments or competitions; audio, video and multimedia production and photography; physical fitness club services; horse riding schools; health club services featuring health and fitness training; golf fitness instruction; organising of horse jumping events; organization of horse races; organization of sports competitions; beach and pool clubs, 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; skiing facilities; lending library services; translation and language interpretation services; consultancy services relating to the training of employees; coaching in economic and management matters; modelling for artists; wine tastings as educational services; training in the restaurant industry; cabarets; theatre services and entertainment services namely, live music, dancing, comedy, dramas and magic; amusement park and theme park services; amusement centers; providing recreation facilities; production of videos, cinematographic films and audio tapes; theatrical ticket agency services; training of hotel management; on-line publication of electronic books and journals in the field of traveling; 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 social function facilities and social meeting facilities; rental of temporary accommodation; booking of temporary accommodation via the Internet; temporary accommodation reservations; agency services for booking hotel accommodation; agency services for arranging temporary accommodation; providing reviews and evaluations of hotels and other temporary accommodations; 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; agency services for making hotel reservations; retirement home services; rental of wedding receptions venues; providing conference rooms; providing convention facilities; provision of conference facilities; providing banquet and social function facilities for special occasions; rental of chairs, tables, table linen, glassware; bar services; restaurant information services; café services; providing of alcoholic beverages; serving food and drinks; providing food and drink for wedding receptions; 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; agency services for booking restaurants; provision of food and drink; providing drink in the nature of wine for wine tasting; personal chef services; charitable services, namely, providing food to needy persons; food and drink catering; providing of social meeting banquet and social function facilities
1) Regarding Registration Nos. 2951635 (SEVEN STARS), the relevant services are: 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
The services are the same as to hotel and restaurant services, and closely related as to hotel booking and reservation, and related hotel services.
See: Hilton Hotels and restaurant, booking and reservations and temporary accommodations, facilities for weddings, social functions, etc. http://www.hilton.com/en/hilton/
See: Embassy Suites hotels, restaurant, booking and reservation, facilities for weddings, social functions, etc. http://www.hilton.com/en/embassy/
See: Ritz Carton hotel, restaurant, booking and reservations and temporary accommodations, facilities for weddings, social functions, etc. - http://www.ritzcarlton.com/
Mandarin Hotel and restaurant online booking and reservations, facilities for weddings, social functions, etc. - http://www.mandarinoriental.com/washington/national-mall/luxury-hotel
Maydan restaurant, booking, and reservation - http://www.maydandc.com/reservations-1
Cheesecake Factory restaurant, booking and reservation – http://locations.thecheesecakefactory.com/va/arlington-72.html?utm_source=Google&utm_medium=Maps&utm_campaign=Google+Places
2) Regarding Registration No. 4625406 (SEVEN STAR), the registrant’s goods are: footwear
The goods and services of the parties are closely related because footwear and retail store services featuring clothing are often provided under the same name from the same source.
See: Sam Edelman online retail store featuring clothing and footwear http://www.samedelman.com/
Michael Kors online retail store featuring clothing and footwear - http://www.michaelkors.com/
3) Regarding Registration No. 4345760 (SEVENSTAR), the registrant’s services are: 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
The services are the same as to vehicle transport and air transport, and closely related as to reservation, information and booking of transport.
See: Auto transport http://www.autotransportdirect.com/
See: Auto, boat, bus, mobile home, and truck Transport and shipping, information, booking and reservation http://www.nationwideunitedautotransport.com/car-shipping/
See: Auto transport and shipping, reservation and booking http://www.shipacardirect.com/index.php
4) Regarding Registration No. 4906497 (SEVEN STARS AWARD), the registrant’s services are: Providing independent ratings and reviews of other businesses for commercial purposes
The services are very closely related, if not the same, as to ratings and reviews of businesses and commercial advice and information.
See: Yelp ratings and reviews of businesses - http://www.yelp.com/
See: Angie’s List reviews of businesses- http://www.angieslist.com/
See: Foursquare reviews of businesses, mostly restaurants http://foursquare.com/
See: TripAdvisor reviews and information on food, restaurants and travel http://www.tripadvisor.com/
As evidenced above, the applicant’s identified services are very closely related to the registrant’s services.
Based on the above, the goods are closely related.
Channels of Trade
As evidenced above, the applicant’s services are commonly sold and provided with the registrants’ goods and services. Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and services are closely related and consumers are likely to be confused as to the source of the goods and services.
Based on the above, the Section 2(d) Refusal is made FINAL.
Stated Refusal Applies to Specific Services
Class 35 - Commercial advice and information for consumers in the choice of products and services; commercial information agency services; compilation of statistics for business or commercial purposes; on-line retail store services featuring clothing; price comparison rating of accommodations;
Class 39 - Car transport; armoured vehicle transport; turbojet airplane transport; air transport; airport services; piloting; 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; booking of transport via global computer networks; airline services; services for arranging transportation by air; bus transport; travel agency services, namely, making reservation and booking for transportation; bus transport; providing information relating to travel and transport via electronic means; reservation services for transportation for travel by land; aircraft parking services;
Class 43 - Providing temporary accommodation; hotels; providing information about temporary accommodation services; provision of information relating to the booking of accommodation; providing social function facilities and social meeting facilities; rental of temporary accommodation; booking of temporary accommodation via the Internet; temporary accommodation reservations; agency services for booking hotel accommodation; agency services for arranging temporary accommodation; providing reviews and evaluations of hotels and other temporary accommodations; 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; agency services for making hotel reservations; rental of wedding receptions venues; providing conference rooms; providing convention facilities; provision of conference facilities; providing banquet and social function facilities for special occasions; bar services; restaurant information services; café services; providing of alcoholic beverages; serving food and drinks; providing food and drink for wedding receptions; 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; agency services for booking restaurants; provision of food and drink; food and drink catering; providing of social meeting banquet and social function facilities
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
IDENTIFICATION OF SERVICES
The amended identification of services remains unacceptable because it includes services not originally identified in the application, e.g., “providing temporary offices” in Class 35. Also, the applicant must delete the duplicate services identified by the strikethrough.
Applicant may adopt the following identification, if accurate:
Class 35 - Commercial 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 indexing on the web for others, for commercial or advertising purposes; commercial lobbying services; public relations consultancy; 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;
provision of advertising space by electronic means and global information networks; rental of advertising space on-line; promotional services, namely, distribution of publicity materials, namely,
flyers, coupons, catalogs and promotional items of others; commercial administration of the licensing of the goods and services of others; business administration services for the processing of sales
made on the internet; business management of hotels; data processing; human resources management and personnel recruitment services; commercial information agency services; compilation of statistics
for business or commercial purposes; market research; retail store services featuring alcoholic beverages except beer; retail store services featuring chocolate; retail store services featuring
confectionery; retail store services featuring beer; retail store services featuring beauty implements for humans; on-line retail store services featuring clothing; administrative processing of
purchase orders; goods or services price quotations; price comparison services; 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; 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; providing temporary offices
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 business jets 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; travel consultancy and information services; bus
transport; 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 and excursion services; arranging transport for business travel; arranging of transportation for travel tours;
arranging transport for traveler tours as a bonus program for credit cards customers; 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 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; 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 tour guide services; providing transport for personal tour guide services; services for the arranging and booking for
transportation of tours; aircraft parking services; booking of reservation at airport parking; all afore services not related to transportation by water, transportation of ships and
airfreight
Class 41 – acceptable
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 social function facilities and social meeting facilities; rental of temporary accommodation;
booking of temporary accommodation via the Internet; temporary accommodation reservations; agency services for booking hotel accommodation; agency services for arranging temporary accommodation;
providing reviews and evaluations of hotels and other temporary accommodations; 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; agency services for making hotel reservations; retirement home services; rental of wedding receptions venues; providing conference rooms; providing convention facilities;
provision of conference facilities; providing banquet and social function facilities for special occasions; rental of chairs, tables, table linen, glassware; bar services; restaurant information
services; café services; providing of alcoholic beverages; serving food and drinks; providing food and drink for wedding receptions; 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; agency services for booking restaurants; provision of food and drink; providing drink in the
nature of wine for wine tasting; personal chef services; charitable services, namely, providing food to needy persons; food and drink catering; providing of social meeting
banquet and social function facilities
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Andrea D. Saunders
/Andrea D. Saunders/
Trademark Attorney
Law Office 117
571-270-3856
Andrea.Saunders@uspto.gov
RESPONSE GUIDANCE
