To: | MERCURY ONE, INC. (shemingway@hh-iplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88330735 - AMERICAN JOURNEY EXPERIENCE - MERC0502TMUS |
Sent: | January 14, 2020 12:46:17 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88330735
Mark: AMERICAN JOURNEY EXPERIENCE
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Correspondence Address: 1700 Pacific Avenue, Suite 4800
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Applicant: MERCURY ONE, INC.
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Reference/Docket No. MERC0502TMUS
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 14, 2020
This Office action is supplemental to and supersedes the previous Office action issued on May 23, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, the identification of services in International Class 41 contains language that is encompassed in more than one class, thus must be clarified.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address all issues raised in this Office action. The issue raised in the previous May 23, 2019 Office action is as follow and is maintained: amendment to the identification of services for International Class 41.
Further, the following refusal and requirements have been satisfied/obviated/withdrawn: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark for International Classes 9 and 41 has been obviated and the disclaimer requirement has been satisfied. See TMEP §713.02. Additionally, applicant was advised of a prior pending application in Serial No. 87091576 that may cause likelihood of confusion if registered, however, this advisory no longer pertains to this application because the relevant class was divided into another application.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Partial Amendment to the Identification of Services
• Multiple Class Application Requirement
Applicant must respond to all issues raised in this Office action and the previous May 23, 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).
AMENDMENT TO THE IDENTIFICATION OF SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate:
International Class 9: no changes to amended identification
International Class 35: study center services, namely physical resources in the form of a website featuring information on the topics of business, politics, demographics, beliefs and perspectives on the topics of business, politics, demographics, and providing online resource center materials in connection therewith; providing information via the internet in the field of business, politics, demographics
International Class 41: museum services; museum curatorial services; educational services, namely, conducting seminars, workshops, classes, conferences, retreats, camps and field trips in the field of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; libraries; study center services, namely physical resources in the form of a website featuring information on the topics of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives on the topics of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives, and providing online resource center materials in connection therewith; providing information via the internet in the field of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; publication of educational material, specifically, books, magazines, journals, newspapers, periodicals, catalogs, brochures; entertainment services in the nature of live performance exhibitions by musical groups, dance troupes, historical reenactors, dramatic and comedy performers, and arranging and presenting social entertainment events in the nature of live music, dance, theater, and multi-media performances; exhibition services, namely, conducting online exhibitions and displays and interactive exhibits in the fields of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; organization of exhibitions for cultural or educational purposes; entertainment services, namely, providing an online interactive database of artwork and educational materials and multi- media content related to museum offerings; publication of books, catalogs, magazines, journals, booklets and guides; publication of electronic and online materials, namely, books, brochures, catalogs, podcasts, blogs, magazine, and journals, relating to museum activities, all of the foregoing related to museum exhibits
International Class 42: study center services, namely physical resources in the form of a website featuring information on the topics of technology and innovation, beliefs and perspectives on the topics of technology, innovation and providing online resource center materials in connection therewith; providing information via the internet in the field of technology and innovation
International Class 45: study center services, namely physical resources in the form of a website featuring information on the topics of religion, beliefs and perspectives on the topics of religion and providing online resource center materials in connection therewith; providing information via the internet in the field of religion
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).
ID Manual Online
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 REQUIREMENT
(1) List the goods and/or 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 services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 2 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response guidelines. For this application to proceed, applicant must explicitly address each 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.
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.
Adebayo, Omolayo
/Omolayo Adebayo/
Examining Attorney
United States Patent and Trademark Office
Law Office 121
Tel: (571) 272-4711
Email: Omolayo.Adebayo@uspto.gov
RESPONSE GUIDANCE