Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  March 06, 2020

 

 

This Office action is in response to applicant’s communication filed on February 10, 2020. In the response, applicant presented argument in favor of registration, amended the Class 35 and 43 recitation of services, disclaimed the wording SUITES and HOTEL.  The amendment to the Class 35 recitation of services is accepted and made of record as is the disclaimer.  Based upon applicant’s response and declaration, the 2(d) refusal is withdrawn.

 

The Class 43 recitation contains indefinite wording which must be amended.

 

RECITATION OF SERVICES

 

The wording “provision of general purpose facilities for events” in the identification of services is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s services.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Without further specification, these services cannot be properly classified. For proper classification purposes, the precise nature of the event is required.   Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate:

 

 

Class 36 – Hotel services; providing temporary accommodation services; restaurant services; bar services; café services; hotel reservation services; restaurant reservation services; catering services for the provision of food and drink; provision of conference, meeting and exhibition facilities, and provision of general purpose facilities for____________ [specify the particular events, e.g. exhibitions, business conferences, trade shows, business meetings, social gatherings, parties].

 

Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name.  See TMEP §1402.03(a).

 

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.

 

REQUIREMENTS OF MULTI-CLASS APPLICATION

 

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 Sections 1(b) and 44:

 

(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 3 classes; however, applicant submitted a fee(s) 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

GENERAL INQUIRY

 

Applicant must explain whether “ATWELL” has any meaning or significance in the industry in which the services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Applicant must also explain whether this wording identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.

              

Further, applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, applicant must respond to the following questions:  Does the term ATWELL have significance or meaning other than being a surname?  If so, what is the significance?  Did any of the founders of applicant’s entity or predecessors have the surname ATWELL?  Does anyone currently associated with applicant’s entity in an executive capacity have the surname ATWELL? Does the term ATWELL have meaning in a foreign language?  Does the term ATWELL have meaning in English?

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

CLOSING

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/William H. Dawe, III/

Examining Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

Bill.Dawe@USPTO.GOV (not for fomal responses)

 

 

 

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 March 06, 2020 for

U.S. Trademark Application Serial No. 88430173

 

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 H. Dawe, III/

Examining Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

Bill.Dawe@USPTO.GOV (not for fomal responses)

 

 

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 March 06, 2020, 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 the Trademark Status & Document Retrieval (TSDR) database 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 use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”