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. 79334903
Mark: SODEXO LIVE !
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Correspondence Address: |
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Applicant: SODEXO
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1648068
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 assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
COLOR CLAIM
DESCRIPTION OF THE MARK
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors _______<specify> are claimed as a feature of the mark.”
Description: “The mark consists of the following: a _______<specify color> _______<specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a red and blue bird on a green mountain>.”
(2) If white is not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
“The mark consists of the following: The mark consists of the word SODEXO with a seven-pointed star above the X, the letters SO appearing in blue and pink, the letters DE appearing in pink and the letters XO as well as the star in red and pink, below which is the word LIVE, the letters LI appearing in blue, the letter V in pink and the letter E in red, with an exclamation point to the right of the SODEXO LIVE appearing in red. The color white represents transparent area and is not part of the mark.”
TMEP §807.07(d).
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and/or services contains brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” See TMEP §1402.12.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Also, some of the wording is indefinite. The following format for an identification is suggested, if accurate:
Organization of exhibitions for commercial or advertising purposes; organization of commercial fairs; commercial event facilitation services, namely, (specify); rental of vending machines; on-line ordering services in the field of restaurant take-out and delivery; organization of fashion shows for promotional purposes; promotion of goods and services by means of sponsorship of sports events in International Class 35.
Transport of goods; Arranging of cruises; transport services for sightseeing tours; transport organization in the framework of sightseeing tours (duplicate entry); passenger transport; chauffeur services; flower delivery; delivery of merchandise; replenishment of
vending machines; rental of drones for photography; booking of seats for travel; transport reservations making reservations and bookings for
transportation; travel reservations; providing information with respect to transport; parking lot services; cloakroom services (wording is
indefinite); delivery of newspapers; refrigerator rental in International Class 39.
Educational services, namely, (specify type and subject matter, e.g., workshops on math); training in the field
of (specify); entertainment services, namely, (specify); organizing sporting and cultural activities; organization of social
entertainment events; party planning [entertainment]; event facilitation services, namely, arranging social entertainment events for others
[entertainment]; presentation of live performances; performance of music hall shows; theater productions; entertainer services, namely, (specify); television show production; booking of seats for shows; ticket agency services [entertainment]; organization and conducting of training workshops in the field of
(specify); sports club services for physical exercise [health and fitness training]; coaching in the field of (specify) [training];
organization of sports competitions; preparing and conducting sports events; organization and conducting of colloquiums in the field of (specify); organization and conducting of
conferences in the field of (specify); organization and conducting of congresses in the field of (specify); organization and conducting of seminars
in the field of (specify); organization and conducting of symposiums in the field of (specify); organization of exhibitions for cultural or educational
purposes; organization and conducting of concerts; orchestra services; organization of sports competitions [education or entertainment]; conducting of guided tours
by (indicate, e.g., bicycle, canoe, roller skates, etc.); cultural, educational and entertainment services provided by art galleries, namely, (specify);
organization of fashion shows for entertainment purposes; rental of audio equipment; rental of video cameras; videotaping; video editing services for events; rental of sports equipment except
vehicles; organization of costume events, namely, cosplay for entertainment; providing information with respect to entertainment; providing information with respect to education;
sound engineering services for events; lighting technician services for events; providing facilities for recreational events namely, {specify recreational activity, e.g., hunting,
fishing, etc.}; providing sports facilities; Entertainment services in the nature of escape games [entertainment]; organization of lotteries; staging of shows
in the nature of (specify, e.g., live musical and comedy shows); photography services; photographic reporting in International Class 41
Services for providing food and beverages, namely, restaurant services; restaurant services; catering services; bar services;
café services; cafeteria services; self-service restaurant services; snack bar services; take-away food and beverage services in the nature of restaurant services; home personal chef services; information and advice with respect to meal preparation; culinary sculpture; rental of meeting rooms; rental of chairs, tables, table linen and glassware; rental
of lighting apparatus for (indicate purpose OTHER than for theatrical sets or television studios or similar purposes, e.g., decorating private residences, public parks, parking
lots, etc.); rental of drinking water dispensers; rental of portable cloakrooms (terms considered too vague); rental of tents in International Class 43.
Hotel concierge services; escorting services in society [chaperoning]; babysitting; planning and arranging of wedding
ceremonies; services for releasing of doves during special events; online social networking services; personal shopping services for others; rental of evening wear; clothing rental; security guard
services in International Class 45.
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.
EMAIL ADDRESS
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); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. LICENSED ATTORNEY
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as France. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/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. 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); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
/Shaunia Carlyle/
Examining Attorney
Law Office 110
United States Patent and Trademark Office
571-272-9374
shaunia.carlyle@uspto.gov
RESPONSE GUIDANCE