| To: | TP Host, LLC (trademarks@kaufcan.com) |
| Subject: | U.S. Trademark Application Serial No. 88266725 - HOST - 0161946 |
| Sent: | January 27, 2020 03:15:20 PM |
| Sent As: | ecom116@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88266725
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. In that Office action, the trademark examining attorney refused registration of the applied-for mark based on the following: Specimen Refusal—Class 35 Only. The Class 35 Specimen Refusal from the June 11, 2019 Office Action is CONTINUED AND MAINTAINED.
Further, 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—Certain Services in Class 35 Only. See TMEP §§706, 711.02.
In addition, the trademark examining attorney now issues the following NEW REQUIREMENT: Identification of Services Requirement—Certain Services in Class 39 Only. See TMEP §§706, 711.02. The examining attorney apologizes for any inconvenience this may cause the applicant.
The following is a SUMMARY OF ISSUES that applicant must address:
• Refusal: Applicant’s Activities Are Not Registrable Services—Certain Services in Class 35 Only—NEW ISSUE
• Specimen Refusal—Class 35 Only—CONTINUED AND MAINTAINED
• Identification of Services Requirement—Certain Services in Class 39 Only—NEW ISSUE
• 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—CERTAIN SERVICES IN CLASS 35 ONLY—NEW ISSUE
The following refusal applies only to the following services: “employment staffing in the field of personnel to operate and maintain property, including vehicles, terminal equipment, storage space and marine equipment and to operate marine terminals and provide stevedoring” in Class 35.
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 substitute specimen indicates that the applicant at times purchases various marine-related equipment and “also hires employees to staff the equipment.” The employee hiring activities of the applicant therefore are for the applicant’s benefit, facilitating the conduct of applicant’s own business. Further, applicant’s hiring activities are merely incidental to its larger business. Thus, these activities are not registrable services.
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL—CLASS 35 ONLY—CONTINUED AND MAINTAINED
The following refusal applies to all services identified in Class 35.
The Class 35 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.
IDENTIFICATION OF SERVICES REQUIREMENT—CERTAIN SERVICES IN CLASS 39 ONLY—NEW ISSUE
Applicant has applied to register the mark HOST for the following services, as amended:
“Freight logistics management in the nature of transport logistics services and information services regarding tracking systems of goods; employment staffing in the field of personnel to operate and maintain property, including vehicles, terminal equipment, storage space and marine equipment and to operate marine terminals and provide stevedoring” in Class 35
“Marine terminal services, namely, marine terminal operation in the nature of cargo loading and unloading services for large container, specialized container, dry and liquid bulk, heavy lift, project cargoes, vehicle cargo, break-bulk cargo, bulk cargo, liquid cargo and general cargo; marine terminal services for cargo in the nature of cargo handling; transportation and delivery services by sea, land, rail and truck; transport of goods by sea, land, rail and truck, namely, vehicle and roll on/roll off transport services, transport of agricultural and construction equipment, bulk and break-bulk cargo and container cargo; transport and storage services for goods in the nature of ocean, short-sea and river shipping, transshipment services, delivery and distribution services, rail ramp services, haul away loading, rental of storage containers, rental of warehouse space, rental of bulk space, rental of storage tanks, and providing information regarding tracking goods in transit; warehousing services; freight forwarding; freighting, namely, freight transportation services via vessels in the nature of arranging and managing transportation of cargo and containers to and from ports on behalf of vessel owners, charterers and cargo owners; warehousing; warehouse storage of goods, cargo logistics and tracking services; providing vessel mooring facilities; vessel transport; cargo handling; providing container, bulk, break-bulk, liquid and general cargo handling services; cargo unloading; providing ocean transportation; marine transport; rental of boats, ships and other vessels, with or without crew; port support, namely, boat, ship and vessel storage and delivery services; stevedoring; stevedoring services” in Class 39
In addition, applicant must clarify the wording “cargo logistics and tracking services” in the identification of services in International Class 39 because it 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, “logistics management in the field of transportation of cargo and containers to and from ports on behalf of vessel owners, charterers and cargo owners” and “cargo logistics and tracking services, namely, planning and scheduling shipments for users of transportation services and tracking freight for others for business purposes” are in International Class 35, and “cargo logistics services, namely, storage, transportation and delivery of cargo for others by ship” are in International Class 39.
Applicant may substitute the following identification of services, if accurate:
“Freight logistics management in the nature of transport logistics services and information services regarding tracking systems of goods; employment staffing in the field of personnel to operate and maintain property, including vehicles, terminal equipment, storage space and marine equipment and to operate marine terminals and provide stevedoring; transportation logistics services in the nature of arranging transportation of cargo and containers to and from ports on behalf of vessel owners, charterers and cargo owners; logistics management in the field of transportation of cargo and containers to and from ports on behalf of vessel owners, charterers and cargo owners; cargo logistics and tracking services, namely, planning and scheduling shipments for users of transportation services and tracking freight for others for business purposes” in Class 35
“Marine terminal services, namely, marine terminal operation in the nature of cargo loading and unloading services for large container, specialized container, dry and liquid bulk, heavy lift, project cargoes, vehicle cargo, break-bulk cargo, bulk cargo, liquid cargo and general cargo; marine terminal services for cargo in the nature of cargo handling; transportation and delivery services by sea, land, rail and truck; transport of goods by sea, land, rail and truck, namely, vehicle and roll on/roll off transport services, transport of agricultural and construction equipment, bulk and break-bulk cargo and container cargo; transport and storage services for goods in the nature of ocean, short-sea and river shipping, transshipment services, delivery and distribution services, rail ramp services, haul away loading, rental of storage containers, rental of warehouse space, rental of bulk space, rental of storage tanks, and providing information regarding tracking goods in transit; warehousing services; freight forwarding; freighting, namely, freight transportation services via vessels; warehousing; warehouse storage of goods; cargo logistics services, namely, storage, transportation and delivery of cargo for others by ship; providing vessel mooring facilities; vessel transport; cargo handling; providing container, bulk, break-bulk, liquid and general cargo handling services; cargo unloading; providing ocean transportation; marine transport; rental of boats, ships and other vessels, with or without crew; port support, namely, boat, ship and vessel storage and delivery services; stevedoring; stevedoring services” in Class 39
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.
RESPONSE OPTIONS FOR PARTIAL REFUSALS AND REQUIREMENTS ADVISORY
(1) Deleting the services to which the refusal pertains;
(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 for those services to which the refusal does 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 refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the services identified in the refusal, 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 classes and services will be deleted from the application: all services in Class 35, and the following services in Class 39: “freighting, namely, freight transportation services via vessels in the nature of arranging and managing transportation of cargo and containers to and from ports on behalf of vessel owners, charterers and cargo owners,” and “cargo logistics and tracking services.” See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following services only: “Marine terminal services, namely, marine terminal operation in the nature of cargo loading and unloading services for large container, specialized container, dry and liquid bulk, heavy lift, project cargoes, vehicle cargo, break-bulk cargo, bulk cargo, liquid cargo and general cargo; marine terminal services for cargo in the nature of cargo handling; transportation and delivery services by sea, land, rail and truck; transport of goods by sea, land, rail and truck, namely, vehicle and roll on/roll off transport services, transport of agricultural and construction equipment, bulk and break-bulk cargo and container cargo; transport and storage services for goods in the nature of ocean, short-sea and river shipping, transshipment services, delivery and distribution services, rail ramp services, haul away loading, rental of storage containers, rental of warehouse space, rental of bulk space, rental of storage tanks, and providing information regarding tracking goods in transit; warehousing services; freight forwarding; warehousing; warehouse storage of goods; providing vessel mooring facilities; vessel transport; cargo handling; providing container, bulk, break-bulk, liquid and general cargo handling services; cargo unloading; providing ocean transportation; marine transport; rental of boats, ships and other vessels, with or without crew; port support, namely, boat, ship and vessel storage and delivery services; stevedoring; stevedoring services” in Class 39. 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