Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

 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:  6/24/2019

 

 

 

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.

 

Search Results

 

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).

 

Identification and Classification of Goods and Services

 

Class 16

The wording “magazines” “pamphlets” “catalogs” in the identification of goods is indefinite and must be clarified to specify the subject matter.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “reviews” in the identification is indefinite and must be clarified because to specify the subject matter which will dictate the class of services, e.g., “providing reviews of restaurants and hotels” in Class 43, “providing reviews of travel service providers” in Class 39.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “stationery articles” “cards” “signs of paper and cardboard” “non-textile labels” “forms” “tickets” in the identification of goods is indefinite and must be clarified because the wording does not make clear the nature of the articles that are included.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The wording could include goods in other classes.

 

The wording “loyalty cards” in the identification is indefinite and must be clarified because it is generally services, e.g., “promoting the goods and services of others by means of the issuance of loyalty rewards cards” in Class 35.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “prospectuses” in the identification is indefinite and must be clarified because it is generally a service as in the “preparation and presentation of business prospectuses” in Class 35.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 35

The wording “advertising management” “advertising mail” “travel and stay planning and booking” “reservation of tickets” in the identification of goods is indefinite and must be clarified because the wording does not make clear the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services or delete as appropriate.

 

The word “sales” in the identification of services in International Class 35 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.  Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring ___.”

 

The wording “reviews” in the identification of goods is indefinite and must be clarified because the wording does not make clear it is a goods, e.g., magazines with product reviews.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “arranging newspaper subscriptions for others.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  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).

 

The wording “arranging of … trips and excursions” in the identification of goods is indefinite and must be clarified to specify, e.g., providing transport for passengers for trips and excursions in Class 39.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “reservation of seats for travel” in the identification of goods is indefinite and must be clarified to specify “booking of seats of travel” in Class 39.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “information on tourism” in the identification of goods is indefinite and must be clarified because it could almost any services from “Promoting tourism in {indicate area or specific geographic location, e.g., Boston, New York metropolitan, Southern California} area” in Class 35 to “dining, accommodations” in Class 43.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “sightseeing” in the identification of goods is indefinite and must be clarified to specify “providing transport for sightseeing tours.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 09:  Memory cards

 

Class 16:  Newspapers; magazines in the field of [specify, e.g., transportation]; pamphlets in the field of [specify, e.g., transportation]; posters and mini-posters; stationery articles, namely, [specify, e.g., stationery]; catalogs in the field of [specify, e.g., toys]; [specify type, e.g., note] cards; loyalty cards, envelopes; printed signs of paper and cardboard; non-textile labels of paper, printed forms; postcards; prospectuses and printed tickets

 

Class 28:  Playing cards

 

Class 35:  Advertising services, radio and television advertising, on-line advertising on a computer network; advertising management, namely, [specify, e.g., pay per click (PPC) advertising management services]; dissemination of advertising material (fliers, samples, prospectuses, printed matter, free newspapers), dissemination of advertising matter; direct mail advertising services; publication of advertising texts; sales promotion for others; retail store services of magazines with product reviews, newspapers, stationery, toys, perfumes, cosmetics, jewelry; arranging newspaper subscriptions for others; rental of advertising space, rental of advertising time on any communication media; organization of exhibitions for commercial or advertising purposes; public relations; arranging newspaper subscriptions for others; promoting the goods and services of others by means of the issuance of loyalty rewards cards; preparation and presentation of business prospectuses

 

Class 39:  Transportation of persons and goods (freight); travel planning and booking, namely, [specify, e.g., travel planning for individuals, families, and groups for special occasions such as destination weddings and honeymoons, travel route planning, travel booking agencies]; escorting and transporting travelers; arranging of cruises; arranging trips and excursions, namely, providing transport of passengers for excursions and trips; booking of seats for travel; reservation of tickets, namely, travel ticket reservation service; rental of vehicles, airplanes, aircraft; information on transportation; information on tourism featuring [specify, e.g., travel and transport information]; providing transport for sightseeing tours; providing reviews of travel service providers

 

Class 41:  Information on tourism, namely, [specify, e.g., conducting guided tours of (indicate facility, e.g., a museum, an historical site, a winery)]

 

Class 43:  Providing reviews of restaurants and hotels; stay planning and booking, namely, reservation and booking of temporary accommodations

 

Additions to Identification Not Permitted

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 amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 amended.  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). 

 

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.

 

Section 1(b) Requirements for Combined Applications

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  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.

 

Class Fees

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

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.    

 

 

/William T. Verhosek/

William T. Verhosek

Examining Attorney

U.S. Patent & Trademark Off

LO 114/571-272-9464

william.verhosek@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on 6/24/2019 for

U.S. Trademark Application Serial No. 88381354

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/William T. Verhosek/

William T. Verhosek

Examining Attorney

U.S. Patent & Trademark Off

LO 114/571-272-9464

william.verhosek@uspto.gov

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from , using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in TSDR to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees.  These companies often have names similar to the USPTO.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.