To: | Bingo Car Wash LLC (ipdocket@lw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88010297 - BINGO - 062605-0001 |
Sent: | 5/25/2019 8:13:15 AM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88010297
MARK: BINGO
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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: Bingo Car Wash 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. 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: 5/25/2019
This Office action responds to the applicant’s correspondence dated April 9, 2019.
The requirement for clarification of the identification of services is maintained and continued.
The applicant’s proposed amended identification of services has raised the following new issue.
NEW ISSUE – RECITED ACTIVITIES ARE NOT “SERVICES” UNDER THE TRADEMARK ACT – Partial Refusal
The activities set forth as services in an application are reviewed using the following criteria to determine whether the services are registrable:
(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.
(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 Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
In this case, the wording “..., Car washing facilities, ...” in “Car wash services, namely, Car washing facilities, automobile cleaning and car washing” is not registrable services because providing car washing facilities is incidental and/or necessary for the applicant’s larger business of car washing when the two activities are listed together. For the activity of providing car washing facilities to be a separate registerable service, the applicant must be providing self-service car washing facilities.
CONTINUED REQUIREMENT – CLARIFICATION OF THE IDENTIFICATION OF SERVICES – Partial Requirement
Applicant may substitute the following wording, if accurate:
International Class 37
Car wash services, namely, providing self-service car washing facilities, automobile cleaning and car washing; auto related services, namely, automobile detailing services, repair of automobiles.
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.
CONTINUED REQUIREMENT FOR INFORMATION – Partial Requirement
With regard to the activities identified as “car wash facilities,” to permit proper examination of the application, applicant must submit additional information about applicant’s services. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). Specifically, applicant must submit the following: a written statement that indicates whether or not the applicant’s car wash facilities are or will be self-service.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
ADVISORY REGARDING FAILURE TO RESPOND
If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 37 will be deleted from the application: Car washing facilities. The application will then proceed with the following services in International Class 37 only: Car wash services, namely, automobile cleaning and car washing; auto related services, namely, automobile detailing services, repair of automobiles. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
TELEPHONE OR EMAIL RESPONSE ENCOURAGED
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.
/John Dwyer/
Examining Attorney
Law Office 116
571-272-9155
John.Dwyer1@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.