UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/2/2019

 

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

 

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

• Particular Wording in the Identification of Services is Indefinite and Broad
• Disclaimer Required
• Response to Office Action

 

 

Particular Wording in the Identification of Services is Indefinite and Broad

 

Applicant must clarify particular wording in the identification of goods and services because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifics are set forth below. Applicant should note the following:

As noted below, many of the software entries in Class 9 are indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods in two international classes – as a product in International Class 9 or a service in International Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  Specifics are set forth below.

Further, regarding applicant’s “information” services: Classification of information services is based on the subject matter of the information provided.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b). Thus, applicant must clarify the subject matter of their information services. Specifics are set forth below.

Specific Issues:

 

Class 9 Issues:

·       Each of the entries in Class 9 is indefinite and broad as applicant has failed to clarify the type of software they provide. NOTE: Applicant’s provision of a function of the software is appreciated. If this is a type of downloadable software, this may be clarified and the goods may remain in Class 9. If, however, applicant is providing temporary access to non-downloadable software, this may be clarified and the services moved to Class 42.

Class 35 Issues:

·       The entry “Providing online business directories featuring restaurants and bars and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information” is indefinite in part. Specifically, regarding: “Providing online business directories featuring restaurants and bars”, applicant must clarify the nature of the directories, e.g. non-downloadable directory publications, web directory services featuring hyperlinks to the websites of others, or a commercial information directory.

Class 36 Issues:

·       “accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network” is indefinite, as “other forms of payment transactions” does not articular the particular service applicant is providing. Further, applicant must clarify the broader category of services “accepting” and “reconciling” falls under.

Class 42 Issues:

·       “providing temporary use of non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others” is indefinite. Applicant must clarify either where the software is accessed “online” a “website”, or the type of software involved, e.g. “computer software”, a “non-downloadable web application”.

·       “providing an online software platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing” is indefinite. Applicant must clarify the broader category of services this falls under, e.g. platform as a service.

·       “providing temporary use of non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries”. is indefinite. Applicant must clarify either where the software is accessed “online” a “website”, or the type of software involved, e.g. “computer software”, a “non-downloadable web application”. This is also the case with the entries “providing temporary use of non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network”.

Class 43 Issues:

·        “providing restaurant and bar reservation and restaurant, bar, food, and hospitality industry information to others” is indefinite, as “industry” information could include a wide array of information topics, from financial information to business information. Applicant must clarify the type of information they are providing in relation to these particular industries as information services are classified according to subject matter. Definite entries include “restaurant and bar information services” in Class 43, “providing information and advice on hotels, restaurants, bars and food service establishments” in Class 43, “providing business information in the restaurant, bar, food and hospitality industries” in Class 35, and “providing financial information in the restaurant, bar, food and hospitality industries” in Class 36.

·       “providing ratings and reviews of restaurants and bars” is indefinite. Applicant must clarify the purpose of the “rating”, e.g. a form of a review.

Applicant may adopt the following identification, if accurate:

 

Class 9: Downloadable computer software and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; downloadable computer software and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; downloadable computer software and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; downloadable computer software and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; downloadable computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network

 

Class 35: Providing online non-downloadable directory publications featuring restaurants and bars, and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information; advertising and promotional services; providing on-line web directory services featuring hyperlinks to the websites of others featuring restaurants and bars; advertising services, namely, promoting the restaurant and bar services of others; promoting the goods and services of others by providing an online platform featuring user generated and user submitted content promotional services, namely, promoting the services of others by providing online restaurant and bar menus, availability, pricing, and other restaurant and bar information; promoting the services of others by providing coupons and vouchers to consumers; providing business information in the restaurant, bar, food and hospitality industries

 

Class 36: Credit card, debit card and gift card processing services, provided via a global computer network; credit card, debit card and gift card transaction processing services, including the accepting and reconciling of credit card, debit card and gift card payments, all provided via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment options; providing financial information in the restaurant, bar, food and hospitality industries

 

Class 42: Providing temporary use of on-line non-downloadable computer and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; Providing temporary use of on-line non-downloadable computer and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; Providing temporary use of on-line non-downloadable computer and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; Providing temporary use of on-line non-downloadable computer and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; Providing temporary use of on-line non-downloadable computer and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network; providing temporary use of online non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; platform as a service (PAAS) featuring computer software platforms for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; providing temporary use of online non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries; providing temporary use of online non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of online non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network; design, development, and configuration of hospitality rewards computer software programs for use in customer relationship management in the restaurant, bar, and hospitality industries

 

Class 43: restaurant and bar reservation and booking services; providing ratings of restaurants and bars; providing reviews, namely, ratings,  of restaurants and bars; restaurant and bar information services; providing information and advice on hotels, restaurants, bars and food service establishments

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

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.

Disclaimer Required

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim “DINING” because it is not inherently distinctive.  This term is at best merely descriptive of a feature of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the Collins Dictionary website and the Merriam-Webster Dictionary website show that to “dine” means to have “dinner”. The attached evidence from the Vocabulary.com website shows that “dining” means “the act of eating dinner”. As applicant’s goods and services are in the field of restaurant services and restaurant reservation services, it is evident that “DINING” is descriptive in relation to these goods and services as the goods and services may aid a consumer in making reservations for dining. The goods and services may also aid a consumer in reading reviews and perusing ratings of various dining establishments.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “DINING” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response to Office Action

 

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. 

 

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.  

 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@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 5/2/2019 FOR U.S. APPLICATION SERIAL NO. 88310518

 

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 5/2/2019 (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.