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: 4/17/2018

 

 

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.

 

The examining attorney respectfully advises applicant that this Office Action contains the following refusal(s)/requirement(s) summarized immediately below and further explained within the body of this Office Action.

 

SUMMARY OF ISSUES that applicant must address:

 

• LIKELIHOOD OF CONFUSION REFUSAL -- applicant must respond to the examining attorney’s refusal to register the proposed mark because of a likelihood of confusion with the cited registered mark(s).

 

• IDENTIFICATION OF SERVICES -- the requirement to revise the identification of services

• DISCLAIMER -- the requirement to disclaim the term(s) “JAPAN”, as outlined below. 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark, WOW! JAPAN + EXPERIENCE with design, is refused because of a likelihood of confusion with the marks:

 

#1.       WOW!  in U.S. Registration No. 4376977 in standard characters;

 

#2.       WOW!  in U.S. Registration No. 4722088 in standard characters;

 

#3.       WOW! EXPERIENCES in U.S. Registration No. 3560752 in standard characters;

 

#4.       THE WOW! EXPERIENCE in U.S. Registration No. 4230433 in standard characters;

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Legal Standard

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

Analysis

 

 

Comparison Of The Marks

 

 

In the present case, applicant’s mark consists of the literal element “WOW! JAPAN + EXPERIENCE with design”.  The cited registration marks:

 

#1.       WOW!  in U.S. Registration No. 4376977 in standard characters;

 

#2.       WOW!  in U.S. Registration No. 4722088 in standard characters;

 

#3.       WOW! EXPERIENCES in U.S. Registration No. 3560752 in standard characters; and

 

#4.       THE WOW! EXPERIENCE in U.S. Registration No. 4230433 in standard characters

 

consist of  the same dominant element (“WOW!”) as appears in the applicant’s mark. 

 

 

The identical, dominant element in both marks is also the first term: “WOW!”. 

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

 

The wording, “JAPAN”, in the applicant’s mark is merely descriptive of the origin of the services and is required to be disclaimed.  (See complete disclaimer requirement in this Office action below).

 

Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording CRS the more dominant element of the mark.

 

 

Although the applicant’s mark includes a design element, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

 

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

 

Comparison Of The Services

 

The application uses very broad and indefinite wording to describe many of its services, which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow services.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).  

 

 

In the present case, applicant’s mark WOW! JAPAN + EXPERIENCE with design is for use on or in connection with services in Classes 35, 36, 39, 41, 42, 43, and 45.

 

The cited registration marks:

 

 

#1.       WOW!  in U.S. Registration No. 4376977 is for services in Class 41;

 

#2.       WOW!  in U.S. Registration No. 4722088 is for services in Class 35;

 

#3.       WOW! EXPERIENCES in U.S. Registration No. 3560752 is for services in Class 39;

 

#4.       THE WOW! EXPERIENCE in U.S. Registration No. 4230433 is for services in Class 41.

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Any goods or services in the registrant’s normal fields of expansion should be considered when determining whether the registrant’s goods and/or services are related to the applicant’s goods and/or services.  TMEP §1207.01(a)(v); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007).  Evidence that third parties offer the goods and/or services of both the registrant and applicant suggest that it is likely that the registrant would expand their business to include applicant’s goods and/or services.  In that event, customers are likely to believe the goods and/or services at issue come from or, are in some way connected with, the same source.  In re 1st USA Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).

 

A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

 

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, 1026 (Fed. Cir. 1988).

 

 

Conclusion

 

Accordingly, the applicant’s proposed mark, WOW! JAPAN + EXPERIENCE with design, is refused for likelihood of confusion under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

Applicant should note the following potential additional ground for refusal.

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has also found marks in prior-filed pending applications that may present a bar to registration of applicant’s mark under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d). 

 

Prior-Filed Pending Applications

 

The filing dates of pending U.S. Application Serial Nos. 85337440, 87315087, 87593814, 87768922, and 87768931, precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF SERVICES

 

 

The identification of services is indefinite and must be clarified because it lacks specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

 

For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below.

 

 

Applicant may adopt the following wording, if accurate:

 

 

Class 35:          Advertising, marketing and promotional services; Providing searchable online advertising guides, namely, {applicant must clarify the services, for example, providing a searchable online advertising guide featuring the goods and services of online vendors};  Public relations services, namely, {applicant must clarify the services, for example, public relations consultancy}; Product demonstrations and product display services, namely, {applicant must clarify the “product display” services}; Organization of trade shows and exhibitions, namely, {applicant must clarify the services, for example, organizing trade show exhibitions in the field of {indicate specific field e.g. automobiles, art, crafts};  Management of loyalty programs, namely, {applicant must clarify the services, for example, administration of a customer loyalty program which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc., or for example, business administration of consumer loyalty programs} with bonuses, namely, {applicant must clarify what is intended by “bonuses”};  Promoting the goods and services of others by distributing coupons;  Gaining of new customers, namely, {applicant must clarify the services} and customer relationship management, namely, {applicant must clarify the services}, in particular through mailings and through web sites, social networks, computer networks;  Provision of advertising space, time and media, namely, {applicant must clarify the services, for example, agencies for advertising time and space, or for example, advertising services, namely, providing advertising space in a periodical}; Distribution of advertising, marketing and promotional material, namely, {applicant must clarify the services, for example, advertising agencies, namely, promoting the services of {specify industry, e.g., automobile dealerships, banks} through the distribution of printed and audio promotional materials and by rendering sales promotion advice};  Advertising, marketing and promotional promotion and marketing services and related consultancy, advisory and assistance services; Promoting recreation and tourism in Japan;  Retail store services and wholesale store services in relation to telecommunication featuring telecommunications equipment and related network equipment;  On-line wholesale and retail store services featuring downloadable text, sound, music, image, video and game files; on-line wholesale and retail store services featuring downloadable comic books and graphic novels;  Auctioneering services; Commercial administration of the licensing of the goods and services of others; Coupon procurement services for others; Import-export agency services; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Price comparison services; Providing a website featuring the ratings, reviews and recommendations posted by consumers on accommodation lodging accommodations, restaurants, activities in the nature of ____________{applicant must elaborate}, facilities in the nature of ____________{applicant must elaborate} and locations in the nature of ____________{applicant must elaborate} for commercial purposes; Commercial information and advice for consumers;  Procurement of contracts for others, namely, {applicant must clarify the services, for example, procurement services, namely, procurement of contracts for others for the purchase of energy, or for example, purchasing and procurement services, namely, procuring of contracts for others for the purchase of goods and labor contracting services};

Business assistance, namely, {applicant must clarify the services}, business management, and administrative administration services, namely, {applicant must clarify the services}; Providing business information; News clipping services;  Business management of transportation fleet in the nature of _________   (business management of) for others, namely, {applicant must clarify the services, for example, fuel management services in the field of {indicate specific field, e.g., aviation, trucking, vehicle fleets, etc.}};  Accountancy, book keeping (,) and auditing, namely, {applicant must clarify the services, for example, financial auditing, or for example, business auditing}; Administrative data processing, namely, {applicant must clarify the services contemplated, for example, data processing services};  Human resources management and recruitment, namely, {applicant must clarify the services contemplated, for example, personnel recruitment}; Clerical work, namely, {applicant must clarify the services contemplated, for example,   clerical services}; Business consultancy and business advisory services {applicant must indicate, for example, provided to {indicate targeted group or profession, e.g., the veterinary medical profession, professional entertainers, non-profit corporations, etc.}, or for example, business advisory services in the field of {indicate field with a business component, e.g., transportation logistics, database management, etc.}};  Rental of office machines, namely, {applicant must clarify the services contemplated, for example, rental of office machinery and equipment}; Business research and compilation  and providing of business information; Market research; Collection and systematization of business data, namely, {applicant must clarify the services contemplated, for example, collection and systematisation of information into computer databases}; Computer file management; Computerized database management; Providing office functions; and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class 

 

 

 

Class 36:          Insurance services, namely, {applicant must clarify the services contemplated, for example, underwriting, issuance and administration of {specify field, e.g., life, health, accident, fire} insurance}}; Insurance agencies; Insurance information; Insurance underwriting, namely, {applicant must clarify the services contemplated, for example, accident insurance underwriting} and appraisals, namely, {applicant must clarify the services contemplated, for example, appraisals for insurance claims of personal property} and assessment, namely, {applicant must clarify the services contemplated, for example, assessing insurance claims} for insurance purposes;  Warranty services, namely, {applicant must clarify the services contemplated, for example, extended warranty services, namely, service contracts};  Warranty insurance services, namely, {applicant must clarify the services contemplated, for example, insurance services, namely, underwriting extended warranty contracts in the field of {indicate specific field, e.g. automobiles, stores}}; Real estate services, namely, {applicant must clarify the services contemplated, for example, real estate agency services}; Rent collection; Pawn brokerage;  Provision of prepaid cards and tokens, namely, {applicant must clarify the services contemplated, for example, issuing prepaid telecommunications calling cards and issuance of tokens of value};  Providing financial information relating to the issue of prepaid {debit} cards, tokens, coupons in the nature of _______{applicant must clarify what is intended by “coupons”} and vouchers in the nature of _______{applicant must clarify what is intended by “vouchers”, for example, vouchers for payment of transportation expenses}; Safe deposit {box} services; Financial and monetary services, namely, {applicant must clarify the services contemplated}, and banking; Providing emergency financial services in the nature of emergency financial assistance for travelers; Debt collection agency services; Currency trading and currency exchange services; Securities and commodities trading services for others; Loan and credit Credit and loan services, and providing lease-finance lease-financing services for {specify type of goods, e.g., IT equipment, computer software, automobiles, etc.};  Debt recovery, namely, {applicant must clarify the services contemplated, for example, financial services, namely, debt resolution services in the nature of debt settlement and elimination} and factoring services, namely, {applicant must clarify the services contemplated};  Investment services, namely, {applicant must clarify the services contemplated, for example, financial investment brokerage services}; Private equity fund investment services;  Financial underwriting and securities issuance in the nature of (investment banking)  investment banking, namely, {for example, financial investment services, namely, administering the issuance, underwriting and distribution of securities}; Financial transfers, namely, {applicant must clarify the services contemplated, for example, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network} and transactions, namely, {applicant must clarify the services contemplated, for example, electronic cash transactions}, and payment services, namely, {applicant must clarify the services contemplated, for example, payment verification services};  Cash, namely, {applicant must clarify the services contemplated}, check (cheque), namely, {applicant must clarify the services contemplated} and money order services;  Card services, namely, {applicant must clarify the services contemplated};  Tax and duty payment services, namely, {applicant must clarify the services contemplated}; Electronic transfer of money; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Financial information, {appraisal} data, advice and consultancy services;  Financial rating, namely, {applicant must clarify the services contemplated, for example, credit rating services} and provision of credit reports, namely, {applicant must clarify the services contemplated, for example, credit reporting services}; Financial appraisal services, namely, {applicant must clarify the services contemplated, for example, financial appraisals in responding to calls for tenders};  Financial planning services;  Financing services and funding services, namely, {applicant must clarify the services contemplated, for example, venture capital funding services to emerging and start-up companies};  Venture capital services, namely, {applicant must clarify the services contemplated, for example, venture capital funding services to emerging and start-up companies}; Fundraising, namely, {applicant must clarify the services contemplated, for example, memorial fundraising} and financial sponsorship of {indicate specific event or activity};  Charitable fund raising; Valuation services, namely, {applicant must clarify the services contemplated, for example, real estate valuation services};  and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class 

 

 

 

Class 39:          Transport rental, namely, {applicant must clarify the services contemplated, for example, medical waste transport services, or for example, organizing transport for travelers};  Transport brokerage; Booking of transport;  Navigation, namely, {applicant must clarify the services contemplated, for example, GPS navigation services}; GPS navigation services; Route planning navigation services, namely, {applicant must clarify the services contemplated, for example, air navigation services}; Rental of GPS equipment for navigational purposes;  Transportation and delivery of goods;  Freight transportation by {indicate specific means, e.g. truck, train, air} and cargo transportation, namely, {applicant must clarify the services contemplated, for example, air cargo transport} and removal services, namely, {applicant must clarify the services contemplated, for example, junk, trash and debris removal};  Mail delivery, namely, {applicant must clarify the services contemplated, for example, delivery of goods by mail order, or for example, postal services, namely, delivering mail to post office} and courier services;  Rental of means of transportation, namely, {applicant must clarify the services contemplated, for example, rental of aircraft};  Providing information relating to car and bicycle rental services via the Internet; Travel, namely, {applicant must clarify the services contemplated, for example, travel guide services} and passenger transportation, namely, {applicant must clarify the services contemplated, for example, passenger transport}; Arranging transport for travelers;  Sightseeing, tour guide and excursion services, namely, {applicant must clarify the services contemplated, for example, providing transport for sightseeing tours, guided tours, and excursions};  Providing information relating to the planning and booking of travel and transport, namely, {applicant must clarify the services contemplated}, via electronic means; Providing transport, namely, {applicant must clarify the services contemplated} and travel information;  Providing road and traffic information;  Rescue services, recovery, namely, {applicant must clarify the services contemplated}, towing, namely, {applicant must clarify the services contemplated, for example, vehicle breakdown towing services}, and salvage services, namely, {applicant must clarify the services contemplated, for example, underwater salvage};  Packaging, namely, {applicant must clarify the services contemplated, for example, packaging articles to the order and specification of others} and storage of goods; Filling, namely, {applicant must clarify the services contemplated} of machines and containers; Loading, namely, {applicant must clarify the services contemplated, for example, freight loading services} and unloading, namely, {applicant must clarify the services contemplated, for example,  unloading cargo} of vehicles;

Vehicle parking and storage; Providing information relating to vehicle parking services; and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class 

 

 

 

Class 41:          Publishing, namely, {applicant must clarify the services contemplated, for example, publishing of books and reviews} and reporting, namely, {applicant must clarify the services contemplated, for example, editorial reporting services};  Electronic desktop publishing;  Publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable;  Providing on-line non-downloadable electronic publications, namely, {indicate specific nature of publication} {indicate subject matter or field};  Providing online non-downloadable comic books, graphic novels(,) and {general feature?} magazines;  News reporters services;  Education services, namely, {applicant must clarify the services contemplated}, entertainment services, namely, {applicant must clarify the services contemplated}, and sport services, namely, {applicant must clarify the services contemplated;

Providing information in the field of {indicate subject matter or field, for example, current events} relating to educational and entertainment activities and events;  Providing a website featuring information in the fields of education, entertainment and sports; Cooking instruction; Tea ceremony instruction; Art instruction, namely, {applicant must clarify the services contemplated, for example educational services, namely, conducting on line and telephonic instruction and courses in the field {indicate specific fields, e.g. computers, music, art}}; Music instruction, namely, {applicant must clarify the services contemplated, for example educational services, namely, conducting on line and telephonic instruction and courses in the field {indicate specific fields, e.g. computers, music, art}};  Judo, Karate and Aikido instruction;

Dance instruction; Providing religious instruction; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; Providing on-line music, not downloadable; Providing on-line computer games;   Conducting guided tours of {indicate facility, e.g., a museum, an historical site, a winery, etc. e.g., London, the Tuscan countryside, etc., guided climbing tours, guided moped tours} for cultural or educational purposes;  Organisation of conferences for non-business and non-commercial purposes, exhibitions for non-business and non-commercial purposes and competitions, namely, {applicant must clarify the services contemplated, for example educational services, namely, conducting {indicate specific mode of instructions, e.g., classes, seminars, conferences, workshops, field trips} for {indicate specific group, e.g., persons with learning disabilities, special needs children, organizations, etc.} in the field of {indicate subject matter or fields of educational activity, and for example, organizing athletic competitions in the field of {indicate sport, e.g., basketball, soccer, swimming, etc.}}; Conducting workshops and seminars in art appreciation, personal awareness; Consultancy relating to arranging and conducting of workshops and seminars, namely, {applicant must clarify the services contemplated, for example, educational services, namely, conducting {indicate specific mode of instructions, e.g., classes, seminars, conferences, workshops} in the field of {indicate specific field, e.g. pet care, math, tax preparation} and distribution of course materials in connection therewith in printed or electronic format};  Gambling services;  Audio production, namely, {applicant must clarify the services contemplated, for example, audio production services, namely, creating and producing ambient soundscapes, and sound stories for museums, galleries, attractions, podcasts, broadcasts, websites and games}, video production, namely, {applicant must clarify the services contemplated, for example, augmented reality video production},  and multimedia production, namely, {applicant must clarify the services contemplated, for example, multimedia entertainment software production services}, and photography;  Providing a website featuring online non-downloadable videos relating to in the field of travel;  Sports and fitness services, namely, {applicant must clarify the services contemplated, for example, providing facilities for {specify type of training, e.g., acting, sports, physical fitness, etc.} training};  Providing information relating to sports;  Sports instruction services; Organizing and conducting of {specify type of sport, e.g., triathlon, cycling, running, etc.} sports events;   Advisory services relating to the organization of sporting events, namely, {applicant must clarify the services contemplated};  Library services, namely, {applicant must clarify the services contemplated, for example, lending library services};  Education and instruction services, namely, {applicant must clarify the services contemplated};  Providing information about education;  Translation and interpretation, namely, {applicant must clarify the services contemplated, for example, language interpretation};  and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class; rental of software, namely, rental of computer game software [suggestion for Class 41, originally  from Class 42]

 

 

 

Class 42:          Software development, namely, {applicant must clarify the services contemplated, for example, software development in the field of {indicate subject matter or field(s)}}, programming, namely, {applicant must clarify the services contemplated, for example, computer programming consultancy}, and implementation, namely, {applicant must clarify the services contemplated, for example, implementation of software for {indicate purpose of software, e.g., authenticating digital signatures, etc.};   Computer programming and maintenance of computer programs; Computer software design and updating; Creating, designing and maintaining web sites;  Hosting services, namely, {applicant must clarify the services contemplated, for example, web site hosting services} and software as a service, namely, {applicant must clarify the services contemplated, for example, software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}and rental of software, namely, {applicant must clarify the services contemplated, for example, rental of computer software}; Application service provider, namely, hosting, managing, developing, and maintaining computer software applications of others in the fields of advertising and marketing; Hosting online web facilities for others for sharing online content;  Hosting of e-commerce platforms on the Internet, namely, {applicant must clarify the services contemplated, for example, providing a web hosting platform for {indicate purpose or intended user};  Cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use};  Electronic storage of digital photographs, music and video files and documents;  Provision of Internet search engines; Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites; Providing a web site featuring temporary use of non-downloadable software for use in electronic storage of digital photographs and data and non-downloadable software for use in language localization in the nature of {applicant must clarify “language localization};  Computer hardware development; Rental of computer hardware and facilities, namely, {applicant must clarify the services contemplated, for example, rental of space in a computer co-location facility for containerized data centers of others};  Information technology (IT) consultancy, advisory, namely, {applicant must clarify the services contemplated} and information services, namely, {applicant must clarify the services contemplated}; Information technology (IT) security, namely, {applicant must clarify the services contemplated, for example, computer security services in the nature of administering digital keys}, protection, namely, {applicant must clarify the services contemplated, for example, computer virus protection services},  and restoration, namely, {applicant must clarify the services contemplated};  Computer virus protection services; Computer security services in the nature of providing authentication, issuance, validation and revocation of digital certificates; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials;

Data duplication, namely, {applicant must clarify the services contemplated, for example, media duplication of data and digital information} and conversion services, namely, {applicant must clarify the services contemplated, for example, conversion of CDs into digital formats}, data coding services, namely, {applicant must clarify the services contemplated, for example, computer code conversion for others};  Science and technology services, namely, {applicant must clarify the services contemplated};  Creation of GPS maps, namely, {applicant must clarify the services contemplated};  Medical and pharmacological research services, namely, {applicant must clarify the services contemplated};  Engineering services, namely, {applicant must clarify the services contemplated, for example, engineering services in the field of environmental compliance};  Surveying and exploration services, namely, {applicant must clarify the exploration services contemplated, for example, mineral exploration services};  Architectural services, namely, {applicant must clarify the exploration services contemplated for example, architectural design services in the fields of traffic and transportation} and urban planning services;  Natural science services, namely, {applicant must clarify the services contemplated};  Weather forecasting; Providing weather information;  Testing, namely, {applicant must clarify the services contemplated}, authentication in the field of {indicate field, e.g. works of art, stamps} and quality control for others;  Design services, namely, {applicant must clarify the exploration services contemplated}, for example, computer-aided design services};  Design and development of electronic data security systems;  and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class 

 

 

 

Class 43:          Temporary accommodation, namely, {applicant must clarify the services contemplated, for example, providing temporary accommodation at {indicate e.g., hotels, guesthouses, etc.}};  Hotels, hostels, and boarding houses house services, holiday and tourist accommodation, namely, {applicant must clarify the services contemplated, for example, providing hotel accommodation};  Boarding house bookings;  Arranging of accommodation for tourists;  Providing information in the field of temporary accommodations for travelers;  Nurseries, day-care centers, and elderly care facilities, namely, {applicant must clarify the services contemplated, for example, providing elder care};  Providing event facilities, namely, {specify nature of event, e.g., wedding receptions, birthday parties, etc.} and temporary office, namely, {applicant must clarify the services contemplated, for example, leasing of portable metal and portable non-metal buildings for use as {indicate intended use, e.g., medical office space, storage, etc.} and meeting facilities, namely, {applicant must clarify the services contemplated, for example, rental of meeting rooms};   Boarding for animals; Rental of furniture, {indicate bed and bath, or for example, table} linens and table settings, namely, {applicant must clarify the services contemplated, for example, rental of tableware;  Provision of food and drink; Food preparation services;  Providing information in the field of  on restaurants, bars, cafes;  Food and drink catering 

 

 

 

Class 45:          Safety services, namely, {applicant must clarify the services contemplated, for example, safety consulting services in the fields of hazard assessments and abatement procedures},   rescue services, namely, {applicant must clarify the services contemplated, for example, animal rescue services, namely, arranging for the adoption of rescued animals}, security, namely, {applicant must clarify the services contemplated, for example, baggage security screening for airlines} and enforcement services, namely, {applicant must clarify the services contemplated, for example, providing intelligence and information to local, state, and federal law enforcement agencies relating to organized crime networks that operate across jurisdictional lines}; Consultancy services relating to health and safety, namely, {applicant must clarify the services contemplated}; Providing authentication of personal identification information identification verification services [This wording is no longer acceptable as the nature of the service activity is unclear, and it appears to encompass computer technology services in Class 42];  On-line social networking services; Personal fashion consulting services; Providing information about fashion; Personal gift selection for others;   Astrological consultation and spiritual services, namely, {applicant must clarify the services contemplated, for example, providing both in-person and on-line holistic spiritual services};  Rental of clothing; Detective agency services; Dating services; Escort services; Funerary services, namely, {applicant must clarify the services contemplated, for example, undertaking};  Religious services, namely, {applicant must clarify the services contemplated, for example, conducting religious prayer services};  Legal services; and rental, namely, {applicant must clarify the services contemplated}, hire and leasing in connection with the aforesaid, namely, {applicant must clarify the services contemplated} , included in the class and advice, consultancy and information for the aforesaid, including in the class 

 

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

DISCLAIMER

 

Applicant must disclaim the wording “JAPAN” in the mark because it is primarily geographically descriptive of the origin of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(2), 1056(a); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services, including the geographic origin thereof, in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “JAPAN” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

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.  

 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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 4/17/2018 FOR U.S. APPLICATION SERIAL NO. 87788522

 

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 4/17/2018 (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.