To: | WeWork Companies Inc. (ricketts-docket@fzlz.com) |
Subject: | U.S. Trademark Application Serial No. 88383171 - WEWORK LABS - WEWO 1905534 |
Sent: | July 06, 2019 08:39:42 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88383171
Mark: WEWORK LABS
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Correspondence Address: FROSS ZELNICK LEHRMAN & ZISSU, P.C.
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Applicant: WeWork Companies Inc.
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Reference/Docket No. WEWO 1905534
Correspondence Email Address: |
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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: July 06, 2019
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:
Classification and Identification of Services
The wording “incubation services in the field of food and beverages” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass incubation services in the nature of providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits in International Class 35, and incubation services in the nature of providing financing to freelancers, start-ups, existing businesses and non-profits or incubation services in the nature of rental of office space to freelancers, start-ups, existing businesses and non-profits in International Class 36.
The wording “providing office space and office amenities to food and nutrition start-up companies” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass incubation services in the nature of providing work space containing business equipment to start-ups in International Class 35, and incubation services in the nature of rental of office space to start-ups in International Class 36.
Applicant may substitute the following wording, if accurate:
Class 035: Incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits in the field of food and beverages; incubation services, namely, providing office work space containing business equipment and office equipment to food and nutrition start-up companies
Class 036: Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits in the field of food and beverages; incubation services, namely, rental of office space to food and nutrition start-up companies
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 Requirements
(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 services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. 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 Sections 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Additional Fees
If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 35 and 36. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. 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.
Disclaimer Required
In this case, applicant must disclaim the wording “LABS” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature of applicant’s 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).
As shown in the attached evidence from the Merriam-Webster dictionary, a “lab” is a “laboratory,” and a “laboratory” is “a place providing opportunity for experimentation, observation, or practice in a field of study.” In addition, the attached evidence from Farlex Financial Dictionary shows that an “incubator” is “A non-profit or for-profit company that ensures that clients, which are all start-ups, have sufficient resources, technical knowledge, and other tools needed to succeed on their own.”
Applicant’s identified services are “incubation services in the field of food and beverages; providing office space and office amenities to food and nutrition start-up companies.”
Thus, the wording LABS in the applied-for mark merely describes a feature of applicant’s services, because applicant’s services provide the opportunity for start-up companies to experiment, obtain technical knowledge, and practice or enhance their skills in the field of food and beverages and food and nutrition, in order to succeed on their own.
The attached evidence from the USPTO’s X-Search database shows that applicant itself has previously disclaimed the wording “LABS” in respect of very similar services, in Registration No. 4818504.
Further, the trademark examining attorney has attached additional evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar services as applicant’s in this case where the wording “LABS” has been disclaimed by the registrants. Third-party registrations featuring services the same as or similar to applicant’s services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co. , 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LABS” 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 Guidelines
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE