To: | Tourism Holdings Limited (seatm@dwt.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88169853 - THL - 91257-12 |
Sent: | 2/7/2019 6:01:48 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88169853
MARK: THL
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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: Tourism Holdings Limited
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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: 2/7/2019
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 OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
· Requirement: Identification of Services – Amendment Required
· Advisory: Multiple-Class Application Requirements
· Advisory: §1(b) and §44(d) Basis with Intent to Perfect Section 44(e)
IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
Applicant may substitute the following wording, with acceptable amendments in bold and information required from applicant in italics, if accurate:
Class 36: Operation of tourist and travel offices and agencies, namely, issuing of travellers’ checks
Class 39: Transportation, travel, and tourism services, namely, arranging of transport for travellers, organization of travel, and arranging of package holidays in the nature of {specify Class 39 services, e.g., coordinating travel arrangements for individuals and for groups, airline transportation services, transport of travellers, providing transport for sightseeing tours}; transport reservation; reservation of travel, namely, {specify Class 39 services, e.g., making reservations and bookings for transportation, booking of travel tickets}; reservation of tours, namely, arranging and booking of transportation for travel tours; reservation of tourist activities, namely, making reservations and bookings for transportation for tourists; providing transport of passengers by land, sea, and air; escorting of passengers and travellers; arranging of transportation for travel tours and excursions for tourists and travellers; arranging of cruises and pleasure airplane transport for tourists and travellers; vehicle rental; leasing of cars, coaches, and motorhomes; hired car, coach, and motorhome transport; rental and leasing of recreational vehicles in the nature of caravans; hired recreational vehicle transport, namely, hired caravan transport; peer-to-peer rental of motorhomes; provision of package holidays in the nature of ski holidays, coach holidays and self drive holidays, namely, {specify Class 39 services, e.g., organizing of travel, arranging of transport for others, coordinating travel arrangements for individuals or groups, booking of tickets for travel}; travel guide services; operation of tourist and travel offices and agencies, namely, {specify Class 39 services, e.g., organizing of travel, arranging of transport for others, coordinating travel arrangements for individuals or groups}; provision of information relating to travel and transport; transport of goods; packaging of goods for transportation; storage of goods; booking agency services for travel, namely, {specify Class 39 services, e.g., travel booking agencies, making reservations and bookings for transportation}; travel reservation services, namely, {specify Class 39 services, e.g., transport reservation, travel ticket reservation service, rental car reservation, making reservations and bookings for transportation for tourists}; provision of all the aforesaid services online, via an intranet, the Internet or by other electronic means
Class 41: Reservation of tourist activities, namely, {specify Class 41 services, e.g., ticket reservation and booking services for entertainment, sporting and cultural events; arranging for ticket reservations for shows and other entertainment events; booking of seats for shows and sports events}; arranging and conducting guided tours of {indicate facility, e.g., a museum, an historical site, a winery} for tourists and travellers; arranging and conducting guided {indicate the type of excursion, e.g., hiking, climbing, moped} excursions for tourists and travellers; provision of tourist services information relating to {specify information about Class 41 services to justify classification, e.g., live entertainment, music, recreation, sporting events}; booking agency services for travel, namely, {specify Class 41 services, e.g., arranging for ticket reservations for shows and other entertainment events, admission ticket reservation and booking services for night clubs and night club events}; travel reservation services, namely, {specify Class 41 services, e.g., booking of seats for shows and sports events; ticket reservation and booking services for entertainment, sporting and cultural events; arranging for ticket reservations for water parks and amusement centers}; provision of all the aforesaid services online, via an intranet, the Internet or by other electronic means
Class 43: Arranging of package holidays, namely, {specify Class 43 services, e.g., making hotel reservations for others, reservation of restaurants, making reservations and bookings for restaurants and meals}; reservation of travel, namely, {specify Class 43 services, e.g., making hotel reservations for others, temporary accommodation reservations, reservation of hotel rooms for travellers}; provision of package holidays in the nature of ski holidays, coach holidays and self drive holidays, namely, {specify Class 43 services, e.g., making hotel reservations for others, reservation of restaurants, making reservations and bookings for restaurants and meals}; operation of tourist and travel offices and agencies, namely, {specify Class 43 services, e.g., making hotel reservations for others, reservation of restaurants, making reservations and bookings for restaurants and meals}; providing information and advice on hotels and restaurants to tourists and business travelers; booking agency services for travel, namely, {specify Class 43 services, e.g., making reservations and bookings for restaurants and meals, booking of temporary accommodation, making reservations and bookings for temporary lodging}; travel reservation services, namely, {specify Class 43 services, e.g., reservation of hotel rooms for travellers, making reservations and bookings for restaurants and meals}; provision of all the aforesaid services online, via an intranet, the Internet or by other electronic means
SCOPE ADVISORY
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(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). The application identifies services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
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).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
§1(b) and §44(d) BASIS WITH INTENT TO PERFECT SECTION 44(e) – ADVISORY
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Geraldine Ingold/
Examining Attorney
Law Office 121
(571) 272-5076
geraldine.ingold@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.