Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79334903 SODEXO LIVE ! (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7933490 3/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Examining Attorney's requirement to amend the identification of services, Applicant has proposed extensive amendments to the identification. Those amendments speak for themselves, but Applicant submits some brief comments. First, with respect to the clauses "transport services for sightseeing tours" and "transport organization in the framework of sightseeing tours" in Class 39. The Examining Attorney required deletion of the latter on the ground it is duplicative of the former. However, they are distinct services in that the former is transport services while the latter is transport organization. Second, the Examining Attorney objected to the wording "providing recreational facilities" in Class 41, but Applicant respectfully points out that the equivalent wording "providing recreation facilities" is in the ID Manual.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Organization of exhibitions for commercial or advertising purposes; organization of commercial fairs; commercial event facilitation services; 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
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Organization of exhibitions for commercial or advertising purposes; organization of commercial fairs; commercial event facilitation services; commercial event facilitation services namely, street marketing, for commercial purposes; 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 eventsClass 035 for Organization of exhibitions for commercial or advertising purposes; organization of commercial fairs; commercial event facilitation services namely, street marketing, for commercial purposes; 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

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 039 for Transport; organization of cruises; transport services for sightseeing tours; transport organization in the framework of sightseeing tours; 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; travel reservations; providing information with respect to transport; parking services; cloakroom services (terms considered too vague in the opinion of the International Bureau - Rule 13(2)(b) of the Regulations); delivery of newspapers; refrigerator rental
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Transport; Transport of goods; organization of cruises; Arranging of cruises; transport services for sightseeing tours; transport organization in the framework of sightseeing tours; passenger transport; chauffeur services; flower delivery; delivery of merchandise; replenishment of vending machines; rental of drones for photography; booking of seats for travel; booking of seats for travel Making reservations and bookings for transportation; transport reservations; travel reservations; providing information with respect to transport; Parking services, namely parking lot services and valet services; parking services; checkroom; cloakroom services (terms considered too vague in the opinion of the International Bureau - Rule 13(2)(b) of the Regulations); delivery of newspapers; refrigerator rentalClass 039 for Transport of goods; Arranging of cruises; transport services for sightseeing tours; transport organization in the framework of sightseeing tours; passenger transport; chauffeur services; flower delivery; delivery of merchandise; replenishment of vending machines; rental of drones for photography; booking of seats for travel Making reservations and bookings for transportation; travel reservations; providing information with respect to transport; Parking services, namely parking lot services and valet services; checkroom; delivery of newspapers; refrigerator rental

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 041 for Education; training; entertainment; sporting and cultural activities; organization of entertainment events; party planning [entertainment]; event facilitation services [entertainment]; presentation of live performances; performance of music hall shows; theater productions; entertainer services; show production; booking of seats for shows; ticket agency services [entertainment]; organization and conducting of training workshops; sports club services [health and fitness training]; coaching [training]; organization of sports competitions; preparing and conducting sports events; organization and conducting of colloquiums; organization and conducting of conferences; organization and conducting of congresses; organization and conducting of seminars; organization and conducting of symposiums; organization of exhibitions for cultural or educational purposes; organization and conducting of concerts; orchestra services; organization of competitions [education or entertainment]; conducting of guided tours; cultural, educational and entertainment services provided by art galleries; 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 [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 recreational facilities; providing sports facilities; escape games [entertainment]; organization of lotteries; staging of shows; photography services; photographic reporting
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Education; Educational services, namely courses in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; training; Training in the fields of cooking, nutrition, business, finance, management, marketing, communication, public relations, personal development, environment, human resources, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; entertainment; Organizing sporting and cultural activities; sporting and cultural activities; Organization of social entertainment events, namely, sport events, exhibitions for cultural purposes, dance performances, fashion shows, live shows, concerts, gaming, fireworks display; organization of entertainment events; Party planning; party planning [entertainment]; Event facilitation services, namely, arranging private social entertainment events for others; event facilitation services [entertainment]; event facilitation services, namely, arranging business social entertainment events for others; presentation of live performances; performance of music hall shows; performance of music-hall shows; theater productions; entertainer services; entertainer services, namely modeling services, live show entertainer, sporting entertainer; show production; Live show production; booking of seats for shows; ticket agency services [entertainment]; Ticket agency services; organization and conducting of training workshops; Organization and conducting of training workshops in the fields of cooking, nutrition, business, finance, management, marketing, communication, public relations, personal development, environment, human resources, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; sports club services [health and fitness training]; Sports club services for physical exercise; coaching [training]; Coaching in the fields of sport, personal development and business performance; organization of sports competitions; preparing and conducting sports events; organization and conducting of colloquiums; Organization and conducting of colloquiums in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization and conducting of conferences; Organization and conducting of conferences in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization and conducting of congresses; Organization and conducting of congresses in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization and conducting of seminars; Organization and conducting of seminars in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization and conducting of symposiums; Organization and conducting of symposiums in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization of exhibitions for cultural or educational purposes; organization of exhibitions for cultural purposes; organization of exhibitions for educational purposes; organization and conducting of concerts; organization of competitions [education or entertainment]; orchestra services; conducting of guided tours; Organization of sports competitions and culinary competitions; cultural, educational and entertainment services provided by art galleries; Conducting of guided tours by bus, car, bicycle, roller skates, plane, helicopter, boat, canoe and walking guided tours; Cultural, educational and entertainment services provided by art galleries, namely, exhibitions and workshop in art galleries for cultural, educational and entertainment purposes; organization of fashion shows for entertainment purposes; rental of audio equipment; rental of video cameras; videotaping; video editing services for events; organization of costume events [cosplay] for entertainment; 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 recreational facilities; escape games [entertainment]; providing sports facilities; Entertainment services in the nature of escape games; staging of shows; organization of lotteries; Staging of shows in the nature of concerts, music-hall, plays, musicals, comedy shows, dramatical shows, circus shows, dance shows; photography services; photographic reportingClass 041 for Educational services, namely courses in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Training in the fields of cooking, nutrition, business, finance, management, marketing, communication, public relations, personal development, environment, human resources, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Organizing sporting and cultural activities; Organization of social entertainment events, namely, sport events, exhibitions for cultural purposes, dance performances, fashion shows, live shows, concerts, gaming, fireworks display; Party planning; Event facilitation services, namely, arranging private social entertainment events for others; event facilitation services, namely, arranging business social entertainment events for others; presentation of live performances; performance of music-hall shows; theater productions; entertainer services, namely modeling services, live show entertainer, sporting entertainer; Live show production; booking of seats for shows; Ticket agency services; Organization and conducting of training workshops in the fields of cooking, nutrition, business, finance, management, marketing, communication, public relations, personal development, environment, human resources, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Sports club services for physical exercise; Coaching in the fields of sport, personal development and business performance; organization of sports competitions; preparing and conducting sports events; Organization and conducting of colloquiums in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Organization and conducting of conferences in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Organization and conducting of congresses in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Organization and conducting of seminars in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; Organization and conducting of symposiums in the fields of business, finance, management, marketing, communication, public relations, personal development, environment, human resources, culinary skills, nutrition, digital data, building safety, personal protection, first-aid, business client and consumer engagement, business facilities management and sales; organization of exhibitions for cultural purposes; organization of exhibitions for educational purposes; organization and conducting of concerts; orchestra services; Organization of sports competitions and culinary competitions; Conducting of guided tours by bus, car, bicycle, roller skates, plane, helicopter, boat, canoe and walking guided tours; Cultural, educational and entertainment services provided by art galleries, namely, exhibitions and workshop in art galleries for cultural, educational and entertainment purposes; 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 recreational facilities; providing sports facilities; Entertainment services in the nature of escape games; organization of lotteries; Staging of shows in the nature of concerts, music-hall, plays, musicals, comedy shows, dramatical shows, circus shows, dance shows; photography services; photographic reporting

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 043 for Services for providing food and beverages; restaurant services; catering services; bar services; café services; cafeteria services; self-service restaurant services; snack bar services; take-away food and beverage services; home 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; rental of drinking water dispensers; rental of portable cloakrooms (terms considered too vague in the opinion of the International Bureau - Rule 13(2)(b) of the Regulations); rental of tents
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Services for providing food and beverages; Services for providing food and beverages, namely, restaurant services and food-trucks services; restaurant services; catering services; bar services; café services; cafeteria services; self-service restaurant services; snack bar services; take-away food and beverage services; Take-away food and beverages in the nature of restaurant services and food-trucks services; home chef 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; Rental of lighting apparatus for public parks, parking lots, airport lounges, hotel rooms, seminars centers, colloquiums centers, conferences centers, congresses centers, symposiums centers, restaurants, bars, stadiums, sport infrastructures; rental of drinking water dispensers; rental of portable cloakrooms (terms considered too vague in the opinion of the International Bureau - Rule 13(2)(b) of the Regulations); Rental of racks for coat check; rental of tentsClass 043 for Services for providing food and beverages, namely, restaurant services and food-trucks services; restaurant services; catering services; bar services; café services; cafeteria services; self-service restaurant services; snack bar services; Take-away food and beverages in the nature of restaurant services and food-trucks 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 public parks, parking lots, airport lounges, hotel rooms, seminars centers, colloquiums centers, conferences centers, congresses centers, symposiums centers, restaurants, bars, stadiums, sport infrastructures; rental of drinking water dispensers; Rental of racks for coat check; rental of tents

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 045 for Concierge services; escorting 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
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Concierge services; Company concierge services, hotel concierge services, concierge services in administrative establishments, concierge services in health institutions, concierge services in training centers and conference centers; escorting in society [chaperoning]; escorting services in society; 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 servicesClass 045 for Company concierge services, hotel concierge services, concierge services in administrative establishments, concierge services in health institutions, concierge services in training centers and conference centers; escorting services in society; 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

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SODEXO
Proposed: SODEXO, société anonyme (sa) legally organized under the laws of France
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) blue, pink, and red is/are claimed as a feature of the mark.

Description of mark
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 SODEXO LIVE appearing in red. The color white represents transparent area and is not part of the mark.

The owner's/holder's proposed attorney information: Michael E. Hall. Other appointed attorneys are Julianne Abelman, Peter B. Bromaghim, Carla H. Clements, Lori B. Cohen, Anthony A. Coppola, Melissa G. Ferrario, Anne C. Fleeson, William S. Fultz, Erica R. Halstead, Nicholas B. Hawkins, Jack B. Hicks, Sarah Anne Keefe, Laura A. Kees, Marie Anne Mastrovito, Kelli A. Ovies, Randel S. Springer, Michael A. Tobin, Jeffrey S. Whittle. Michael E. Hall of Womble Bond Dickinson (US) LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      555 Fayetteville Street, Suite 1100
      Raleigh, North Carolina 27601
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 110423.01.6.
      The email address is tmdocketing@wbd-us.com

Michael E. Hall submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      AREOPAGE
Correspondence Information (proposed):
      Michael E. Hall
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): michael.hall@wbd-us.com; sarah.keefe@wbd-us.com; elizabeth.sousa@wbd-us.com

The docket/reference number is 110423.01.6.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /meh/     Date: 10/26/2022
Signatory's Name: Michael E. Hall
Signatory's Position: Attorney of record
Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    AREOPAGE
   
   
   1 bis rue de Pongerville
   F-92000 NANTERRE,
Mailing Address:    Michael E. Hall
   Womble Bond Dickinson (US) LLP
   555 Fayetteville Street, Suite 1100
   Raleigh, North Carolina 27601
        
Serial Number: 79334903
Internet Transmission Date: Wed Oct 26 14:30:43 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2022102614304352
5019-79334903-8004972e0febca398b818123f6
9f409b5e899bcdbbbbc25269b73223ad94ccf1b-
N/A-N/A-20221026142047072372