To: | WeWork Companies Inc. (ricketts-docket@fzlz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88232116 - WE - WEWO 1814397 |
Sent: | 2/14/2019 6:28:22 PM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88232116
MARK: WE
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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: WeWork Companies 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: 2/14/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
SUMMARY OF THE ISSUES:
- Prior-Filed Application – Advisory
- Identification of the Services – Clarification Required
- Multiple-Class Application Requirements – Advisory
- New Drawing of the Mark Required
PRIOR-FILED APPLICATION – ADVISORY
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 mark in the referenced application. 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.
However, Applicant must respond to the requirements below.
IDENTIFICATION OF THE SERVICES – CLARIFICATION REQUIRED
Applicant’s current identification of the services is not acceptable and requires clarification.
International Class 035
First, the wording “Incubation services,” and “Incubation services, namely, providing work space to emerging, start-up and existing companies” is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits” are in International Class 035 and “incubation services, namely, rental of office space to freelancers, start-ups, existing businesses and non-profits” are in International Class 036. Thus, Applicant must clarify the nature of the services and ensure their proper classification.
Second, the wording “business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities” in the identification of services is indefinite and must be clarified to specify that the services are being done for others. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The remainder of the wording in this class is acceptable.
International Class 036
The wording “Real estate services” is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “real estate leasing services” are in International Class 036 and “real estate development services” are in International Class 037. Thus, Applicant must clarify the nature of the services and ensure their proper classification.
The remainder of the wording in this class is acceptable.
International Class 043
The wording in this class is acceptable, but Applicant is strongly encouraged to adopt the minor changes.
Suggested Identification
Applicant may substitute the following wording, if accurate:
International Class 035: Incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits; Incubation services, namely, providing work space containing business equipment to emerging, start-up and existing companies; providing facilities for business meetings and business events; business operation for others of commercial real estate, offices and office space; business operation for others of commercial real estate, offices and office space, namely, shared office venues with conference facilities
International Class 036: Real estate {specify services, e.g., brokerage, rental} services; real estate services, namely, leasing of real property and apartments; leasing of office space; leasing or renting of buildings; real estate brokerage; rental of office space; rental of offices for co-working; rental of temporary and shared office spaces and offices
International Class 043: Providing contract food and beverage services; providing meeting room services in the nature of rental of meeting rooms
Amendment Guidelines
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 – ADVISORY
(1) List the goods and 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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least four classes; however, Applicant submitted fees sufficient for only three classes. 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.
NEW DRAWING OF THE MARK REQUIRED
Therefore, Applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
ASSISTANCE
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.
/Xheneta Ademi/
Examining Attorney
Law Office 122
(571) 272-7151
xheneta.ademi@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.