To: | Airbnb, Inc. (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88083759 - PLUS - 1101245 |
Sent: | 12/6/2018 2:39:17 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88083759
MARK: PLUS
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CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Airbnb, Inc.
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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: 12/6/2018
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.
Search Results
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).
Identification of Goods and Services
The highlighted wording in the identification of goods and services is overly technical and identifies independent feature or components. Applicant must specify the exact nature of the goods and/or services using only the common commercial name. Therefore, applicant must delete the bullet points from the application.
The term “excursions” is vague in Class 039. Under Nice 10-2016 descriptions of services involving organizing and conducting tours, excursions, or sightseeing activities must state that the activity is primarily a transport activity in Class 039.
The wording “educational information related to temporary accommodations and temporary rentals” is vague and does not appear to identify educational services in Class 041. Information services in Class 041 are restricted to providing information “about education” itself and not information for educational purposes.
The following identification of goods and services is suggested, if accurate:
Computer software and application software for mobile devices, namely, software that allows, provides, permits, and facilitates users to communicate with each other, list and rent temporary lodging, access information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, and rental and leasing advertisements for the foregoing, solicit each other to perform a wide range of personal and customized services, housekeeping, cooking and related services, personalized travel, itinerary and private tour and activity services, message among guests of lodging accommodations owned and hosted by others and among the hosts who list lodging accommodations for rent, arrange for temporary lodging check-in help, including the remote exchange of keys to lodgings and for locking and unlocking lodgings, buy and sell goods and/or services, including real property, property rental services, home goods, transportation services, and to arrange for professional photographs of the listed goods/services, make and receive payments for the rental, purchase and sale of goods and services, plan, announce, invite others to attend and evaluate real world meetings and events, provide reviews and feedback about listers and renters of goods and services, real estate, suggested improvements to listings and their advertisements, temporary lodging, transportation, the value and prices of sellers' goods and services, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith, search for travel, transportation, temporary accommodation, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, provide travel reviews and recommendations for local attractions, engage in social networking featuring temporary lodging, the rental and listing of real estate, travel, transportation, the rental and listing of goods and permit users to manage, organize, calendar and share with others travel bookings, activity dates, photographs, opinions and preferences through management tools, in Class 009.
Classified listings for rentals of a wide-variety of consumer and business goods, excluding real estate listings; Providing online business directories featuring temporary lodging; Providing an online interactive website containing users comments concerning buyers and sellers of consumer goods and services, business organizations, service providers, and travel and social activity networks for commercial purposes; Consumer information services, namely, providing information to consumers about professionals in the field of property and house management, interior design services, house cleaning, and home repairs / handyman services; Providing advertisements for rental and leasing of housing, apartments, condominiums, townhouses, real estate; Providing information, namely, compilations, rankings, ratings, reviews, referrals and recommendations relating to business organizations, service providers, and travel and social activities using a global computer network for commercial purposes; Providing a searchable online advertising guide featuring the goods and services of online vendors; Advertising, advertisement, and promotion services and related consulting; Promoting the goods and services of others; Providing an online business information directory; Organizing and hosting workshops, conferences and exhibitions in the field of travel, hospitality and social networking for commercial, promotional and advertising purposes; Customer loyalty services and customer club services for commercial, promotional and advertising purposes, in Class 035.
Organizing and hosting workshops, conferences and exhibitions in the field of travel, hospitality and social networking for non-business and non-commercial purposes; Providing online, non-downloadable electronic publications, namely, [specify format, e.g. books, travel guides, etc.] and videos and online newsletters featuring lodging and travel information, reviews of lodging and travel providers, in Class 041.
Providing reservation, booking and search services for temporary accommodations and temporary rental listings, namely, [specify exact nature of “search” services]; Providing information in the field of temporary accommodations and temporary rental listings; Providing rental information for temporary accommodations and temporary rental listings, namely, property descriptions and images, reviews, locations and amenities, availability and rates, in Class 043.
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.
Foreign Filing Basis For US Applicant
Applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3). However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin. 15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05. “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled. 15 U.S.C. §1126(c); TMEP §1002.04-.05.
If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:
(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and
(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.
If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.
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.
/Saima Makhdoom/
Law Office 101
U.S. Patent and Trademark Office
Tele: (571) 272-8802
Fax: (571) 273-8802
E-Mail: saima.makhdoom@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.