To: | Spike's Holding, LLC (dwong@btlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85712103 - WINNER'S CIRCLE - 22721-222442 |
Sent: | 12/21/2012 12:00:40 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85712103
MARK: WINNER'S CIRCLE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Spike's Holding, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 12/21/2012
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.
No Conflicting Marks
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Promotion of Own Services not a Service
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(1) A service is a real activity, not an idea, concept, process or system;
(2) A service is performed primarily for the benefit of someone other than the applicant; and
(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
TMEP §1301.01(a); see In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829, 831 (TTAB 1983); In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979).
In this case, the description set forth in the identification of services is as follows: “customer loyalty services featuring issuance and processing of loyalty points for purchase of company's goods and services; customer loyalty services featuring an awards program to customers in which purchase points may be redeemed for store merchandise; arranging and conducting incentive reward programs to promote the sale of clothing, footwear, and head wear, sporting goods, watches, sunglasses, bags, and apparel-, footwear- and sporting goods-related accessories.” The specimen indicates that these activities are not registrable services because the “loyalty services” and “awards program” are provided solely for the purpose of promoting Applicant’s own retail store services. (Please see Applicant’s attached registrations for Applicant’s retail store services). Additionally, the “benefit” provided is merely discounts and reward dollars to be used at Applicant’s retail stores.
Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business. However, promotion of one’s own goods or services is not considered a service under the Lanham Act since the beneficiary of such an activity is the business itself and not a third party. These special programs do confer some benefit to the customers who participate in the program, but this benefit flows directly from use of the trademark owner’s goods or services. Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39. Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of [indicate field] featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases." This service would be in Class 35 because it is primarily a retail store service.
TMEP §1402.11(h).
Response to Refusal
Thank you,
/Michael Webster/
Examining Attorney
Law Office 102
571-272-9266
michael.webster@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.