Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

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.

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior Filed Applications
• Identification Requirement
• Signature Requirement
• Name Differs on Foreign Registration – Refusal and Information Requirement

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5486723, 5658854, 5434329, 5564247, 5264347, 5173395, 4841845, 5004457, 4959099, 4756249, 3355731, 3293393, and 5010502. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the "du Pont factors"). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are "relevant and of record" need be considered. M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John's, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) ("The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks."); TMEP §1207.01.

Applicant seeks registration for the mark THE COLLECTIVE (& design) for "Class 36: Real estate services; financial services; investment services; rental of property; rental of office space; rental of office space for co-working; leasing of office space; letting of flats and apartments; rent collection; venture capital funding services to emerging and startup businesses; charitable fundraising and financial sponsorship; hire of temporary office space; Class 37: Construction services; building services; building maintenance services; maintenance of property; cleaning of buildings; repair of buildings; refurbishment of buildings; swimming pool maintenance; laundry services; dry-cleaning services; Classs 41: Entertainment services; organising entertainment events; arranging of cultural and arts events; providing courses of training; arranging and conducting of wine tasting events for entertainment purposes; cooking instruction; organisation of language courses; martial arts instruction; drawing instructions; art exhibition services; provision of live music; organisation of comedy shows; organisation of sporting events; ticket information services for entertainment events; organising competitions; organising competitions for amusement, recreation and cultural purpose; organising sporting competitions; publication of magazines, newspapers, leaflets, catalogues, calendars, booklets, books and texts; providing electronic publications; cinema services; gymnasium club services; providing swimming facilities; education and instruction services; sports and fitness services; arranging of workshops; Class 43: Accommodation services; reservation of temporary accommodation; provision of temporary accommodation; provision of food and drink; providing accommodation for functions; provision of event facilities and meeting facilities; provision of conference and exhibition facilities; provision of temporary office accommodation; hospitality services; restaurant and bar services; self-serve restaurant services; snack-bar services."

Below is a chart with registrants’ marks and services:

 

 

U.S. Reg. No	Mark	Services
5486723	THE COLLECTIVE (& design)	Class 37: Building construction services; building maintenance services; maintenance of real estate property; Class 43: Accommodation services, namely, providing temporary housing accommodations and providing reservations for temporary housing accommodations; providing of food and drink; providing temporary facilities for hosting events in the nature of conferences, exhibitions, banquets and social functions; rental of meeting rooms
5658854	THE COLLECTIVE ACCESS	Fundraising services, by means of organizing, arranging and conducting fundraising programs for the benefit of schools and non-profit organizations.
5434329	SAKS FIFTH AVENUE THE COLLECTIVE	Retail department store services; On-line retail department store services.
5564247	THE COLLECTIVE BEAT	Membership club services in the nature of providing discounts to on-line women's fitness club members in the field of fitness training and athletic apparel.
5264347	THE COLLECTIVE EXPERIENCE (& design)	Entertainment in the nature of motorcycle and automobile races; Organizing sporting events, namely, motorcycle, football, automobile and basketball events; Arranging, organizing, conducting and hosting social entertainment events for sports enthusiasts; Providing information relating to sports and sporting events.
5173395	THE COLLECTIVE	Business training in the field of business, entrepreneurship, marketing, online and digital marketing, online marketing education, marketing education, digital web skills, professional development, lifestyle, productivity, personal development, business development; Educational services, namely, providing on-line training, courses and instruction in the field of business, entrepreneurship, marketing, online and digital marketing, online marketing education, marketing education, digital web skills, professional development, lifestyle, productivity, personal development, business development; Professional coaching services in the field of business, entrepreneurship, marketing, online and digital marketing, online marketing education, marketing education, digital web skills, professional development, lifestyle, productivity, personal development, business development; Providing group coaching in the field of business, entrepreneurship, marketing, online and digital marketing, online marketing education, marketing education, digital web skills, professional development, lifestyle, productivity, personal development, business development.
4841845	THE COLLECTIVE	Arranging and conducting trade shows in the field of clothing and fashion accessories.
5004457	GRADEGOD THE COLLECTIVE (& design)	Multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video, and films.
4959099	THE COLLECTIVE	Incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits; Membership club services in the nature of providing discounts to members in the field of event rental space; On-line business networking services; On-line professional networking services; Providing co-working facilities equipped with office equipment.
4756249	THE COLLECTIVE MUSEUM	Museum services.
3355731	THE COLLECTIVE	Instruction in the field of music.
3293393	THE COLLECTIVE SOUND (& design)	Educational services, namely providing summer camps and after school educational programs in the fields of music for elementary, junior and senior high school children; Entertainment, namely live performances by musical bands; Production of sound and music video recordings.
5010502	COLLECTIVE	Class 9: CD-ROMS, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring gaming and operating software for arcade computer/video game apparatus; computer programs for arcade computer/video games, downloadable from communication networks; arcade video game programs; programmed-data-carrying magnetic disks, magnetic tapes, CD-ROMS, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring personal computer games; computer programs for personal computer games, downloadable from communication networks; computer game programs for mobile phones; computer game programs for mobile phones, downloadable from communication networks CD-ROMS, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring gaming and operating software for computer/video game apparatus for home-use; computer programs for computer/video games for home-use, downloadable from communication networks; video game programs for home-use; game programs for hand-held games with liquid crystal displays, downloadable from communication networks; downloadable electronic publications in the nature of newsletters and magazines in the field of computer games and video games provided by means of multi-media electronic broadcast or network transmission; Class 41: Entertainment services, namely, providing temporary use of non-downloadable computer games; non-downloadable computer games provided remotely by means of the internet; entertainment information services; publication of computer game strategy guides; publication of computer games in the nature of production of computer game software, providing on-line computer games; publication of books, magazines, newsletters, and periodicals, all relating to computer games; information and advisory services in the field of online computer games

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b). Here, applicant’s mark, THE COLLECTIVE (& design), is composed in part of the same dominant and distinctive wording, THE COLLECTIVE, found in all of registrants’ marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Because the marks all share the same dominant and distinctive wording, there is a common commercial impression between applicant’s mark and the registrants’ marks. Therefore the marks are confusingly similar.

 

Comparison of the Services

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be "related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the services emanate from the same source." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe the services, e.g., “entertainment services” “education and instruction services,” which presumably encompasses all services of the type described, including registrant(s)’ more narrow services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ services are related.

 

Conclusion

 

Because the marks create the same commercial impression and the services are related, there is a likelihood of confusion as to the source of the services. Therefore, applicant’s mark is not entitled to registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

Although applicant's mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below. In addition, applicant should note the following additional potential grounds for refusal.

PRIOR-FILED APPLICATION(S)

 

The filing dates of pending U.S. Application Serial Nos. 88296327, 88288256, 88288251, 88170420, 88031230, 87318746, 87913400, 87910584, 79252595 and 87627943 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

IDENTIFICATION

General Guidelines

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

NOTE: Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

Class Specific Issues and Suggested Amendment

 

The chart below lists each entry in applicant’s identification and notes if the wording is acceptable. For each indefinite and broad identification entry, additional information is provided, which explains why the entries are indefinite or too broad and/or how to clarify the wording. Below the chart is a suggested amendment to the identification which applicant may adopt. Suggested changes are displayed in bold font.

 

Class 36

 

Original Language	Issue	Suggestion
Real estate services	Indefinite and too broad. Specify type of real estate service.	Real estate management services.
financial services	Indefinite. Specify type of financial service.	Financial services, namely, money lending
investment services	Indefinite. Specify type of investment service.	Capital investment services
rental of property	Indefinite. Clarify nature of service.	Real estate service, namely, rental property management
rental of office space	Acceptable
rental of office space for co-working	Acceptable
leasing of office space	Acceptable
letting of flats and apartments	Acceptable
rent collection	Acceptable
venture capital funding services to emerging and startup businesses	Acceptable
charitable fundraising and financial sponsorship	Indefinite. Specify event or activity of sponsorship	Charitable fundraising and financial sponsorship of {indicate specific event or activity, e.g., sporting competitions, theatrical shows, etc.}
hire of temporary office space	Indefinite. Clarify nature of service.	Leasing of temporary office space

 

Class 37

 

Original Language	Issue	Suggestion
Construction services	Indefinite. Specify type of construction service.	Construction project management services
building services	Indefinite. Specify type of building service.	Building construction services
building maintenance services	Acceptable
maintenance of property	Acceptable
cleaning of buildings	Acceptable
repair of buildings	Acceptable
refurbishment of buildings	Acceptable
swimming pool maintenance	Acceptable
laundry services	Acceptable
dry-cleaning services	Acceptable

 

Class 41

 

Original Language	Issue	Suggestion
Entertainment services	Indefinite and too broad. Specify common name of services.	Entertainment services, namely, {specify type of service, e.g., cheerleading, cabarets, helicopter rides, etc.}
organising entertainment events	Indefinite and too broad. Specify type of entertainment events.	Organizing entertainment events in the nature of {specify type of event, e.g., social parties, music festivals, bicycle racing, etc.}
arranging of cultural and arts events	Acceptable
providing courses of training	Indefinite. Indicate subject matter of courses	Providing training courses in the field of {specify subject matter, e.g., sales management, strategic planning, etc.}
arranging and conducting of wine tasting events for entertainment purposes	Acceptable
cooking instruction	Acceptable
organisation of language courses	Acceptable
martial arts instruction	Acceptable
drawing instructions	Acceptable
art exhibition services	Acceptable
provision of live music	Indefinite. Specify nature of performance.	Provision of live music concerts.
organisation of comedy shows	Acceptable
organisation of sporting events	Indefinite. Specify type of sporting event.	Organizing sporting events, namely, {indicate type of event, e.g., swimming meets, soccer competitions, etc.}
ticket information services for entertainment events	Indefinite. Clarify delivery means and field of entertainment.	Providing ticket information services for musical and theatrical entertainment events via a website
organising competitions	Indefinite. Indicate type of entertainment or education competition	Organizing educational and entertainment competitions in the field of {indicate type of entertainment or education competition, e.g., basketball, mathematics, chess, etc.}
organising competitions for amusement, recreation and cultural purpose	Indefinite. Specify type of competitions.	Organising {specify type, e.g., athletic, spelling, chess, etc.} competitions for amusement, recreation and cultural purpose
organising sporting competitions	Acceptable
publication of magazines, newspapers, leaflets, catalogues, calendars, booklets, books and texts	Acceptable
providing electronic publications	Indefinite and too broad. Specify that the publications are non-downloadable, the nature of the publication, and the field.	Providing non-downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., magazines, newsletters, etc.} in the field of {indicate subject matter of publication, music, theater, etc.}
cinema services	Indefinite. Clarify nature of cinema service	Cinema theater services
gymnasium club services	Acceptable
providing swimming facilities	Acceptable
education and instruction services	Indefinite. Specify nature and subject matter of educational services.	Education and instruction services, namely, providing classes, seminars, workshops, and tutoring in the field of {indicate field or subject matter, e.g., exercise, fitness and wellness}
sports and fitness services	Indefinite. Specify type of sports and fitness services.	Sports and fitness services, namely, {specify type, e.g., physical fitness training services, physical fitness assessment, etc.}
arranging of workshops	Indefinite. Specify field or subject matter of workshops	Arranging professional workshops

.

 

Class 43

 

Original Language	Issue	Suggestion
Accommodation services	Indefinite. Clarify nature of accommodation service	Providing temporary housing accommodation services
reservation of temporary accommodation	Acceptable
provision of temporary accommodation	Acceptable
provision of food and drink	Acceptable
providing accommodation for functions	Indefinite. Clarify nature of accommodation service	Providing hotel accommodation for functions
provision of event facilities and meeting facilities	Indefinite. Clarify nature of event facilities	Provision of general purpose event facilities and meeting facilities
provision of conference and exhibition facilities	Acceptable
provision of temporary office accommodation	Indefinite and too broad. Clarify nature of accommodations	Leasing of portable modular metal and modular non-metal structures for use as temporary office space
hospitality services	Indefinite. Clarify nature of hospitality services.	Hospitality services in the nature of food and drink catering
restaurant and bar services	Acceptable
self-serve restaurant services	Acceptable
snack-bar services	Acceptable

 

Applicant may adopt the following complete identification of services, if accurate, with changes noted in bold:

 

Class 36: Real estate management services; Financial services, namely, money lending; Capital investment services; Real estate service, namely, rental property management; rental of office space; rental of office space for co-working; leasing of office space; letting of flats and apartments; rent collection; venture capital funding services to emerging and startup businesses; Charitable fundraising and financial sponsorship of {indicate specific event or activity, e.g., sporting competitions, theatrical shows, etc.}; Leasing of temporary office space

 

Class 37: Construction project management services; Building construction services; building maintenance services; maintenance of property; cleaning of buildings; repair of buildings; refurbishment of buildings; swimming pool maintenance; laundry services; dry-cleaning services

 

Class 41: Entertainment services, namely, {specify type of service, e.g., cheerleading, cabarets, helicopter rides, etc.}; Organizing entertainment events in the nature of {specify type of event, e.g., social parties, music festivals, bicycle racing, etc.}; arranging of cultural and arts events; Providing training courses  the field of {specify subject matter, e.g., sales management, strategic planning, etc.}; arranging and conducting of wine tasting events for entertainment purposes; cooking instruction; organisation of language courses; martial arts instruction; drawing instructions; art exhibition services; Provision of live music concerts; organisation of comedy shows; Organizing sporting events, namely, {indicate type of event, e.g., swimming meets, soccer competitions, etc.}; Providing ticket information services for musical and theatrical entertainment events via a website; Organizing educational and entertainment competitions in the field of {indicate type of entertainment or education competition, e.g., basketball, mathematics, chess, etc.}; Organising {specify type, e.g., athletic, spelling, chess, etc.} competitions for amusement, recreation and cultural purpose; organising sporting competitions; publication of magazines, newspapers, leaflets, catalogues, calendars, booklets, books and texts; Providing non-downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., magazines, newsletters, etc.} in the field of {indicate subject matter of publication, music, theater, etc.}; Cinema theater services; gymnasium club services; providing swimming facilities; Education and instruction services, namely, providing classes, seminars, workshops, and tutoring in the field of {indicate field or subject matter, e.g., exercise, fitness and wellness}; Sports and fitness services, namely, {specify type, e.g., physical fitness training services, physical fitness assessment, etc.}; Arranging professional workshops

 

Class 43: Providing temporary housing accommodation services; reservation of temporary accommodation; provision of temporary accommodation; provision of food and drink; Providing hotel accommodation for functions; Provision of general purpose event facilities and meeting facilities; provision of conference and exhibition facilities; Leasing of portable modular metal and modular non-metal structures for use as temporary office space; Hospitality services in the nature of food and drink catering; restaurant and bar services; self-serve restaurant services; snack-bar services

 

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.

 

SIGNATURE

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

FOREIGN REGISTRATION – Refusal and Information Requirement

 

REFUSAL – APPLICANT IS NOT THE OWNER OF THE FOREIGN REGISTRATION

 

Registration is refused under Trademark Act Section 44(e) because the applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as The Collective (Living) Limited, while the foreign registration sets forth the owner as Woodcote Enterprises Ltd.

 

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that the foreign registration was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006.

 

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as the basis for registration.  See TMEP §806.04. 

 

INFORMATION REQUIRED TO ESTABLISH OWNERSHIP OF FOREIGN APPLICATION

 

Applicant’s submission of a foreign registration that specifies an owner different from that of the U.S. applicant raises a question regarding the applicant’s ownership of the underlying foreign application.  See TMEP §1005.  In an application filed under Section 44(d), an applicant must be the owner of the foreign application on the filing date of the U.S. application.  TMEP §1005; see In re De Luxe, N.V., 990 F.2d at 609, 26 USPQ2d at 1477; In re Tong Yang Cement Corp., 19 USPQ2d at 1690-91.  Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date.  TMEP §1005; see 37 C.F.R. §2.61(b). 

 

Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006. 

 

If applicant cannot establish ownership of the foreign application, applicant will not be entitled to the Section 44(d) priority filing date and the priority claim will be deleted.  TMEP §1005. 

 

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

 

 

/Loretta Beck/

Loretta Beck

Staff Attorney

Law Office 100

571-272-9245

Informal inquiries: loretta.beck@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/19/2019 FOR U.S. APPLICATION SERIAL NO. 88301602

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/19/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.