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. 79313358
Mark: AETHOS
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Correspondence Address:
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Applicant: Aethos AG
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1596942
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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 USPTO DATABASE OF MARKS
IDENTIFICATION OF SERVICES REQUIREMENT
The identification of services is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the services.
Below is a breakdown of the issues per class.
Class 43
The wording “rental of venues for exhibitions, conference equipment, temporary office space, event structures and meeting rooms” and “rental of exhibition venues and space for advertising use, especially for the presentation of vehicles” in the identification of services in International Class 43 is indefinite and too broad. This wording must be clarified because it is not clear what the services are and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Specifically, it is unclear if applicant is providing “rental of venues for exhibitions” “rental of conference equipment”, “rental of temporary office space”, etc., or if applicant is providing “rental of venues for exhibitions that feature conference equipment, temporary office space, etc.” If it is the former, rental of equipment are classified in the class of the services provided by means of the rented objects, e.g., “rental of conference equipment being audio equipment” are in Class 41, and “rental of event structures being furniture” are in Class 43. Furthermore, “rental of exhibition venues and space for advertising use, especially for the presentation of vehicles” could encompass “rental of advertising space” in International Class 35, and “rental of exhibition venues” in International Class 43.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of 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 services may be classified in several international classes, any modification to this wording must identify services in International Class 43 only, the class specified in the application for these services. See TMEP §1904.02(c), (c)(ii).
The wording “reservation of temporary accommodation and hotel reservations” in the identification of services is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must further specify the nature of the services, e.g., that the services are for others.
Class 44
The wording “Operation of spa and wellness hotels” in the identification of services in International Class 44 is indefinite and too broad. This wording must be clarified because it is not clear what the services are and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, hotel services are in International Class 43 and health spa services are in International Class 44.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of 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 services may be classified in several international classes, any modification to this wording must identify services in International Class 44 only, the class specified in the application for these services. See TMEP §1904.02(c), (c)(ii).
Class 45
The wording “licensing of franchise concepts, exclusively in connection with hotel accommodation (hospitality) and catering and hotel accommodation services in apartments (serviced apartments)” in the identification of services is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must further specify the nature of the services.
Applicant may substitute the following wording, if accurate. Suggested additions and changes are in bold underline, and items the applicant must clarify are in italics:
Class 35: Consulting services regarding administration and commercial management of hotels; administrative management of hotels
Class 36: Financing services in connection with hotels; building management, exclusively related to catering services and hotel accommodation in apartments
Class 43: Providing of
food and drink and temporary accommodation; hotel, boarding house and motel services; cafe, restaurant and bar services; catering services for provision of food and beverages; rental of venues for exhibitions
featuring conference equipment, temporary office space, event structures and meeting rooms; agency services for temporary rental of
houses, accommodation and holiday apartments; reservation of temporary accommodation and hotel reservations for
others; accommodation agency services being the reservation of hotels, boarding houses for others; rental of exhibition
venues and space for advertising use, especially for the presentation of vehicles
Class 44: Operation of spa and wellness hotels, namely, health spa services for health and wellness of the body and spirit
Class 45: Legal services with respect to licensing for franchising concepts; advice regarding intellectual property, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; licensing of intellectual property rights, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; licensing of franchise concepts being intellectual property, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; licensing of industrial property rights, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; granting of licenses to others for industrial property right and copyright use; professional legal advisory services relating to franchising, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; exploitation of industrial property rights and copyrights by means of licensing, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; provision of information relating to industrial property rights, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments; legal services, namely, preparation of regulations, exclusively in connection with hotel accommodation being hospitality, and catering and hotel accommodation services in serviced apartments
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 REQUIREMENT
The following description is suggested, if accurate: The mark consists of the stylized wording “AETHOS”, wherein the “AE” are combined to form the ligature “Æ”.
EMAIL ADDRESS REQUIRED
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
U.S.-LICENSED ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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).
RESPONSE GUIDELINES
For this application to proceed, 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.
/Derek van den Abeelen/
Trademark Examining Attorney
Law Office 126
(571) 270-3997
derek.vandenabeelen@uspto.gov
RESPONSE GUIDANCE