To: | Jumeirah International LLC (thomas.brooke@hklaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85013335 - VENU - 72610/17 |
Sent: | 7/19/2010 8:14:37 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
Attachment - 1
Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85/013335 MARK: VENU | |
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/teas/eTEASpageD.htm |
APPLICANT: Jumeirah International LLC | |
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 7/19/2010
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.
Refusal under Section 2(d) – Likelihood of Confusion
The applicant has applied to register the mark VENU (and Design) for “contract food and beverage services; restaurant, self service restaurant, takeaway restaurant, coffee shop, café, snack-bar services; catering for the provision of food and beverage services; preparation of food and beverage services.” Registration No. 2870224 is THE VENUE (and Design) for “restaurant services; restaurants featuring food and drink; catering services for providing food and drink.” Registration No. 3513259 is for the mark THE VENUE for restaurant and bar services.” The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).
The marks are phonetic equivalents. The services are identical or very highly related. The similarities between the marks and the services are so great as to create a likelihood of confusion. The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Prior Pending Application Potential for Additional Refusal under Section 2(d)
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Description of the Mark not Accurate
Therefore, applicant must provide a more accurate description of the applied-for mark. The following is suggested:
The mark consists of a dark circle containing the word VENU. The letter U in VENUE is stylized.
Translation of the Mark
Applicant must submit an English translation of the mark. 37 C.F.R. §2.32(a)(9); TMEP §809. The following translation statement is suggested: “The English translation of VENU is COME.” See TMEP §809.03. See attached translation taken from www.altavista.com.
Filing/Registration Basis
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04(b).; or
(2) If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
Identification of Goods in International Class 16
Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods. If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods.
International Class 16: Paper and paper products, namely, [identify by common commercial name]; cardboard and cardboard products, namely, [identify by common commercial name]; booklets featuring [indicate subject matter]; informational flyers featuring; pamphlets in the field of [indicate]; calendars; blank cards; business cards; blank forms; stickers; greeting cards; printed invitations; printed paper labels; newsletters in the field of [indicate]; note books; stationery note pads; blotters; memorandum and engagement books; photographs; photograph albums; diaries; letter racks; file folders; postcards; posters; printed tickets; writing pads; writing paper; printed matter, namely, [identify by common commercial name, e.g., magazines, books, etc. in the field of [indicate field]]; newspapers; printed menus; paper drinks coasters, paper place mats; periodicals in the field of [indicate]; books in the field of [indicate]; bookbinding materials; printed publications, namely, [identify by common commercial name, e.g., magazines, books, etc. in the field of [indicate field]]; journals in the field of [indicate]; brochures about [indicate[; magazines in the field of [indicate]; catalogues in the field of [indicate]; stationery and office requisites, namely, [indicate each requisite by common commercial name]; pens; pencils; felt pens; propelling pencils; ballpoint pens; graduated rulers; erasers; paperweights.
Recitation of Services in International Class 35
Applicant classified the services “serviced apartment … management” in International Class 35; however, the correct classification is International Class 36. See 37 C.F.R. §6.1. If applicant retains these services in the application, it must amend the application to list these services in applicant’s recitation in International Class 36.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
International Class 35: Public relations, marketing and advertising; publicity agents; marketing to promote temporary accommodation of others, including serviced apartments and apartment hotels; business consultancy; business management and advice; business administration; hotel, and restaurant management; franchise services, namely, offering business management and assistance in the establishment and/or operation of food and beverage services, restaurant, self service restaurant, takeaway restaurant, coffee shop, café, snack-bar services, preparation of food and beverages services and hotel, serviced apartment and temporary accommodation services; the bringing together, for the benefit of others, of a variety of goods excluding the transport thereof, enabling customers to conveniently view and purchase those goods in the field of [indicate]; office administration and personnel management; compiling and maintaining databases; organization of exhibitions and trade fairs for commercial or advertising purposes; rental of advertising space; arranging, conducting, managing and providing loyalty rewards programs, including administering the provision of benefits and rewards connected with loyalty rewards programs to promote the goods and services of others; consumer incentive programs to promote the goods and services of others; promotion for others of hotel accommodation, restaurants, food, beverages, resorts, spas, golf courses, sports events, travel packages, tours and theme parks through the administration of an incentive award program; provision of the aforementioned services via a global computer network; provision of information and consultancy services relating to the aforementioned services.
Recitation of Services in International Class 36
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant may adopt the following identification in International Class 36, if accurate. The examining attorney has placed suggestions and corrections to be made in bold and in brackets.
Therefore, applicant must submit samples of advertisements or promotional materials for the identified services. If such materials are not available, applicant must submit samples of advertisements or promotional materials for similar services. In addition, applicant must describe in detail the nature, purpose and channels of trade of the services.
International Class 36: Apartment management; real estate services, namely, [indicate by common commercial name]; real estate management; commercial, retail and residential real estate services, namely, [indicate by common commercial name]; management and leasing of commercial, retail and residential real estate; real estate, leasing and rental services provided and conducted in relation to apartments, services apartments, villas, offices, spas, resorts, golf courses, marinas, hotels, industrial estates, shopping malls and shopping villages; management of rental apartments and villas; real estate brokerage services; real estate appraisal services; financial services, namely, [indicate by common commercial name]; investment services, namely, [indicate by common commercial name]; property fund services, namely, [indicate by common commercial name]; property finance services, namely, [indicate by common commercial name]; evaluation of real property; [indicate type of property] property management services and [indicate type] property portfolio management services; [indicate type] property investment services; [indicate type] property brokerage services; [indicate type] property insurance services; land development services, namely, planning and laying out of residential and/or commercial communities; land acquisition services; appraisal, selection and acquisition of real estate for development and investment; acquisition of land to be let; financial and insurance services connected with arranging, conducting, managing and providing loyalty rewards programs, namely, [indicate financial and insurance services by common commercial name]; issuing of tokens or vouchers of value in relation to loyalty reward programs; financial sponsorship of [indicate what is being sponsored]; provision of brokerage services of [indicate what is being brokered]; issuing of travelers’ checks; provision of information in relation to all these services, including provision of information on these services via a global computer network.
Identification of Services in International Class 39
Applicant classified the services “concierge services” in International Class 39; however, the correct classification is International Class 45. See 37 C.F.R. §6.1. If applicant retains these services in the application, then applicant must comply with the multiple-class requirements stated elsewhere in this Office action. See 37 C.F.R. §2.86; TMEP §§1403 et seq. Alternatively, applicant may amend the application to delete these goods and/or services.
(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The filing fees for adding classes to an application are as follows:
(1) $325 per class, when the fees are submitted with an electronic response filed online at http://www.uspto.gov/teas/index.html, via the Trademark Electronic Application System (TEAS); or
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).
If the applicant amends the application to add International Class 45, the applicant may adopt the following identification of services in that international class, if accurate: Personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes. See TMEP §1402.01.
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant may adopt the following identification in International Class 39, if accurate. The examining attorney has placed suggestions and corrections to be made in bold and in brackets.
International Class 39: Transport by [indicate mode, e.g., boat, bus, etc.]; packaging and storage of goods; travel arrangement, namely, [indicate by common commercial name or describe type of travel arrangements being made]; transport of passengers and goods; travel agency services, [indicate], arranging of sightseeing tours, arranging of tours; taxi transport services; chauffeur services; arranging of cruises; booking of seats for travel; boat rental; transport of passengers by boat; rental of deep water diving suits; travel and tour ticket reservation; porter services; advisory, consultancy and information services relating to all the aforementioned services
Recitation of Services in International Class 41
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant may adopt the following identification in International Class 41, if accurate. The examining attorney has placed suggestions and corrections to be made in bold and in brackets.
International Class 41: Education services, namely, [indicate by common commercial name]; training services in the field of [indicate]; providing and operating hotel and hospitality industry training facilities; entertainment services, namely, [indicate]; sporting and cultural activities, namely, [indicate]; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; golf course operation; providing tennis facilities; providing swimming pool facilities; arranging and conducting of conferences, meetings, exhibitions, training sessions, workshops, business fairs, congresses and lectures; operation of amusement parks and theme parks; publication of books; providing recreation facilities in the nature of [indicate]; publishing of electronic publications; facilitating the electronic publishing of works of others featuring text, audio, video, and graphics; providing on-line journals and web logs or blogs featuring user-created content in the field of [indicate]; providing information on exercise and fitness; provision of information in relation to all these services, including provision of information on these services via a global computer network
Recitation of Services in International Class 43
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant may adopt the following identification in International Class 43, if accurate. The examining attorney has placed suggestions and corrections to be made in bold and in brackets.
Therefore, applicant services identified as “services apartment services” must submit samples of advertisements or promotional materials for the identified services. If such materials are not available, applicant must submit samples of advertisements or promotional materials for similar services. In addition, applicant must describe in detail the nature, purpose and channels of trade of the services.
International Class 43: Hotel services; providing temporary accommodations; reservation, booking and information services relating hotels and temporary accommodation; hotel services for the provision of facilities for conferences, meetings, exhibitions, training sessions, workshops, business fairs, congresses and lectures; hospitality services, namely, [indicate by common commercial name]; contract food and beverage services; restaurant, self service restaurant, takeaway restaurant, coffee shop, café, snack-bar services; catering for the provision of food and beverage services; preparation of food and beverage services.
Recitation of Services in International Class 44
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant may adopt the following identification in International Class 44, if accurate. The examining attorney has placed suggestions and corrections to be made in bold and in brackets.
International Class 44: Hygienic and beauty care services; aromatherapy services; providing Turkish bath facilities; beauty salon services; hairdressing salon services; manicuring services; massage services; sauna services; health spa services for health and wellness of the body and spirit offered at a health resort or health club facility; health and relaxation resort services, namely, [indicate by common commercial name]; health and medical information services; medical testing services, namely, fitness evaluation; dietary and nutritional advice; beauty and skin care services; health spa services for health and wellness of the body and spirit, namely, cosmetic body care services; provision of tanning services and facilities; provision of manicure and pedicure services.
Guidelines – Identification of Goods and Services
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.
/Julie A. Watson/
Trademark Attorney
Law Office 109
(571) 272-9236
(571) 273-9109 (fax)
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.