To: | TP Host, LLC (trademarks@kaufcan.com) |
Subject: | U.S. Trademark Application Serial No. 88266720 - HOST - 0161946 |
Sent: | January 27, 2020 10:45:36 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. 88266720
Mark: HOST
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Correspondence Address: |
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Applicant: TP Host, LLC
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Reference/Docket No. 0161946
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 27, 2020
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office action is supplemental to and supersedes the previous Office action issued on June 11, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following NEW REFUSAL: Applicant’s Activities Are Not Registrable Services—Class 39 Only. See TMEP §§706, 711.02.
In a previous Office action dated June 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Specimen Refusal—Class 39 Only.
The following refusal is CONTINUED AND MAINTAINED: Specimen Refusal—Class 39 Only.
The following is a SUMMARY OF ISSUES that applicant must address:
• Refusal: Applicant’s Activities Are Not Registrable Services—Class 39 Only—NEW ISSUE
• Specimen Refusal—Class 39 Only—CONTINUED AND MAINTAINED
• Response Options for Partial Refusals and Requirements Advisory
• Partial Abandonment Advisory
Applicant must respond to all issues raised in this Office action and the previous June 11, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
REFUSAL: APPLICANT’S ACTIVITIES ARE NOT REGISTRABLE SERVICES—CLASS 39 ONLY—NEW ISSUE
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(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 description set forth in the identification of services is as follows: “Leasing in the field of marine assets equipment, namely conveyors, tanks, tracks, stevedoring and port terminal equipment” in Class 39. The specimen indicates that these activities are not registrable services because the leasing services are described by the specimen as applicant’s leasing assets from others, whereas the services identified in Class 39 must be the applicant’s leasing various marine assets to others. Leasing assets from others, or performing any activity that facilitates the conduct of its own business, is primarily for the applicant’s own benefit, whereas a service must be primarily for the benefit of someone other than the applicant. See TMEP §1301.01(a)(ii).
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL—CLASS 39 ONLY—CONTINUED AND MAINTAINED
The Class 39 Specimen Refusal issued in the Office Action dated June 11, 2019 is CONTINUED AND MAINTAINED. The substitute specimen does not obviate the initial Specimen Refusal in the June 11, 2019 Office Action.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE OPTIONS FOR PARTIAL REFUSALS AND REQUIREMENTS ADVISORY
(1) Deleting the class to which the refusals pertain;
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusals do not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusals. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
PARTIAL ABANDONMENT ADVISORY
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.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: 39. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class only: 36. See TMEP §718.02(a).
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.
How to respond. Click to file a response to this nonfinal Office action.
/Christopher J Nodes/
Christopher J Nodes
Examining Attorney
Law Office 116
(571) 272-5220
christopher.nodes@uspto.gov
RESPONSE GUIDANCE