UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/20/2017

 

 

After review of applicant’s response received on 07/05/2017, the following is determined: the refusal to register on the ground of likelihood of confusion with registration no. 4637731 is withdrawn; the refusal to register on the ground of likelihood of confusion with registration nos.  4253781 and 4138306 is maintained and continued; the requirement for an acceptable identification of goods/services is maintained and continued.

 

CLAIM OF UNITY OF CONTROL IS NOT ACCEPTABLE FOR REGISTRATION NOS. 4253781 and 4138306

 

The claim of unity of control with registration no. 4637731 is accepted because applicant states that SeaWorld Entertainment Inc. owns all of applicant, SeaWorld LLC.

 

However, applicant does not actually indicate the specific legal relationship between SeaWorld LLC and SeaWorld Parks & Entertainment LLC.  Applicant appears to indicate that these two entities are sister LLCs.  If this is correct, then applicant must indicate submit additional evidence, supported by an affidavit, to show there is unity of control between the sister LLCs.  The mere fact that they are sister LLCs and both include SeaWorld in the name of the respective LLCs is not evidence of unity of control.

 

If both the applicant and the registrant are wholly owned by a third common parent, the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source. See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987) ; Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982) . Likewise, where an applicant and registrant have certain stockholders, directors, or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). The applicant’s evidence or explanation should generally be supported by an affidavit or a declaration under 37 C.F.R. §2.20.  See TMEP section 1201.07(b)(iii).

 

A legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.

 

Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity.  See TMEP §1201.07(b)(i)-(ii).  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii). 

 

However, in most other situations, additional evidence is required to show unity of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii). 

 

Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties.  In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks.  See TMEP §1201.07(b)(i)-(iii).  This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

ACCEPTABLE IDENTIFICATION OF GOODS/SERVICES

 

The wording “Electronic publications namely, web blogs on a variety of subjects of interest to children and young adults; Electronic publications namely, web blogs on animals, zoo keeping, science, ecology, wildlife conservation, rescue and rehabilitation, and animal care” in class 16 in the identification of goods is indefinite and must be clarified because it does not sufficiently indicate the specific goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:

 

CLASS 9: Electronic publications namely, newsletters, web blogs, e-books, and audio books recorded on computer media on a variety of subjects of interest to children and young adults; Electronic publications namely, newsletters, web blogs, e-books, and audio books recorded on computer media on animals, zoo keeping, science, ecology, wildlife conservation, rescue and rehabilitation, and animal care

 

CLASS 41: providing online non-downloadable electronic publications namely, newsletters, web blogs, e-books, and audio books on a variety of subjects of interest to children and young adults; providing online non-downloadable electronic publications namely, newsletters, web blogs, e-books, and audio books on animals, zoo keeping, science, ecology, wildlife conservation, rescue and rehabilitation, and animal care

 

The wording “Art supplies, namely, paints and paint brushes” in class 16 is not acceptable because it includes goods classified in more than one class.  Applicant may adopt the following wording, if accurate:

 

CLASS 2: art supplies, namely, paint

 

CLASS 16: art supplies, namely, paint brushes

 

If applicant adopts the suggested amendment of the identification of goods, then applicant must add class 2 to the application.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The wording “plastic containers” in class 20 does not sufficiently indicate the specific plastic containers.  Applicant may adopt the following wording, if accurate:

 

Plastic bins, plastic boxes, plastic storage containers for household use

 

The wording “Houseware, namely, indicate specific houseware products” in class 21 is not acceptable because it does not indicate the specific houseware products, i.e. spatulas for kitchen use.

 

The wording “strainers” in class 21 is not acceptable because it does not indicate what is strained, i.e. household strainers for juice is.

 

Applicant has classified “Kitchenware, namely, knives” in International Class 21; however, the proper classification is International Class 8.  Therefore, applicant may respond by (1) adding International Class 8 to the application and reclassifying these goods in the proper international class, (2) deleting “Kitchenware, namely, knives” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording for class 28 is not acceptable because it does not sufficiently indicate the specific goods.  Applicant may adopt the following wording, if accurate:

 

 

CLASS 4: wax for surf boards

 

CLASS 9: snorkels; scuba masks

 

CLASS 28: Sporting goods, namely, golf balls, golf gloves, golf ball markers, tennis balls, bows and arrows, and badminton sets, balloons, kites, surfboards and body boards, surfboard belts, surfboard harnesses, bags for surfing boards, kites and skis, golfing bags, surfing equipment, namely, surf fins, surf paddles, water skis, surf grab board handles, coiled surfing leashes, body boards, and paddleboards, volleyballs, volleyball nets, paddleboard rackets and balls, beach balls; Fabric plush animals; Inflatable water toys; Play swimming pools; Swimming floats, swimming flippers, swimming kick boards; Baby toys; Crib toys; Bath toys; Play wands; Toy banks; Plush toys; Stuffed toys; Puppets; Puzzles and dice games; Wooden toy building blocks; Dominoes; Yo-yo's; Jigsaw puzzles; Flying discs; Toy music boxes; Board games; Card games; Golf clubs, golf balls; golf tees; golf gloves; golf flags; Balls for sports; Toy action figures and accessories therefor; Action skill games; Balloons; Doll playsets; Christmas tree ornaments; Dolls and doll clothing; Kites; Paper party favors; Bubble making wands and solution sets; Hand-held units for playing electronic games; Video game machines for use with televisions; Electric action toys; Manipulative games; Toy vehicles; Snow globes; Children's play cosmetics

 

Applicant has classified “charitable fundraising” in International Class 35; however, the proper classification is International Class 36.  Therefore, applicant may respond by (1) adding International Class 36 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “charitable fundraising” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “making reservations and bookings for hotels, restaurants, and excursions” does not sufficiently indicate the specific services and includes services classified in more than one class.  Applicant may adopt the following wording, if accurate:

 

CLASS 39: travel booking agency services, namely, making reservations and bookings for excursions

 

CLASS 43: making hotel and restaurant reservations for others

 

The wording for the services in class 41 is not acceptable because it does not sufficiently indicate the specific services and includes services classified in more than one class.  Applicant may adopt the following wording, if accurate:

 

CLASS 39: providing information in the field of animal rescue, namely, removing animals from harm and transporting them to shelters for educational or entertainment purposes

 

CLASS 41: Entertainment services, namely, amusement and theme park services; Entertainment services, providing information in the fields zoo keeping for educational or entertainment purposes; entertainment services, namely, providing a website featuring non-downloadable photographs and videos on animals, zoo keeping, science, ecology, wildlife conservation, rescue and rehabilitation, and animal care; entertainment services in the nature of an amusement park show; Entertainment services, namely, arranging for ticket reservations for amusement park attractions; Amusement park and theme park services; Amusement park rides; Live stage shows, exhibitions and performances, namely, live musical performances, live music concerts, live show performances, live theatrical performances, live performances by costumed characters; Theater productions; Animal training services; Recreation information; providing information about education; providing information relating to live entertainment; Educational services, namely, providing instructional seminars, question and answer sessions, workshops and classes in the fields of nature, animals, wildlife, animal habitats, biology, biological diversity, wildlife preservation, habitat preservation, ecology, the environment, sustainability, rehabilitation, zoology and botany; Recreational camps; Providing zoological facilities to the public; Organizing community sporting and cultural events; Providing a website in the field of entertainment and education; Providing a website featuring entertainment information in the field of fiction and non-fiction topics; Providing on-line non-downloadable electronic publications in the nature of web blogs and newsletters in the fields of animals, wildlife, animal habitats, biology, biological diversity, wildlife preservation, habitat preservation, ecology, the environment, sustainability, rehabilitation, zoology and botany; Providing on-line multimedia content, namely, production of multimedia entertainment content; Production, presentation, and distribution of multimedia entertainment content; Production of entertainment; Production of films, television, and radio programs; Production of sound and video recordings; Entertainment ticket agency services; Digital video, audio, and multimedia publishing services; Animation production services; Charitable services, namely, [indicate specific charitable services, i.e. charitable fundraising in class 36]; Rental of sporting equipment, except vehicles; Providing recreational and leisure facilities; Conducting guided tours of amusement parks; Providing entertainment information, providing information regarding education; Providing online ticket sales, namely, online entertainment ticket agency services; Online ticket booking services for amusement parks and amusement park voucher packages

 

CLASS 42: Entertainment services, providing scientific research information in the fields of animals, science, ecology, wildlife conservation, rescue and rehabilitation, and animal care for educational or entertainment purposes

 

CLASS 44: providing information in the field of veterinary services, namely, animal care and rehabilitation for educational or entertainment purposes

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

REQUIREMENTS FOR ADDING A CLASS OF GOODS/SERVICES

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

RESPONSE OPTIONS FOR A FINAL ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.   

 

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/20/2017 FOR U.S. APPLICATION SERIAL NO. 87213181

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/20/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.