To: | Tea Olive I, LLC (dzubke@bestlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88492071 - SF - N/A |
Sent: | September 05, 2019 01:31:09 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88492071
Mark: SF
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Correspondence Address: |
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Applicant: Tea Olive I, LLC
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Reference/Docket No. N/A
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: September 05, 2019
INTRODUCTION
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).
Concerning “administration of a customer affinity/loyalty marketing program for commercial, promotional and/or advertising purposes whereby members earn and accumulate rewards for purchase of Applicant's goods and services” the identification of services is indefinite and must be clarified because the services identifies a service that is provided for the benefit of the applicant, not a services that is provided for the benefit of others. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
As provided in TMEP § 1301.01(a)(ii), to be a service, an activity must be primarily for the benefit of someone other than the applicant. For example, while an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); see TMEP §1301.01(b)(i). Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.
The controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").
As provided in TMEP§ 1402.11(h), many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business. However, promotion of one’s own goods or services is not considered a service under the Trademark Act since the beneficiary of such an activity is the business itself and not a third party. See 1301.01(b)(i). These special programs do confer some benefit to the customers who participate in the program, but this benefit flows directly from use of the trademark owner’s goods or services. Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39. Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of {indicate field or type of goods/services} featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases." This service would be in Class 35 because it is primarily a retail store service. It should be noted that organizing and conducting a program of this type for a third party is a promotion/advertising service and would be classified in Class 35 and identified with language such as "promoting the goods and services of others by means of a point accumulation program with points used for discounts on future purchases of those goods and services" (or whatever the details of the program may be). See TMEP § 1402.11(h).
As such, suggestions have been made below consistent with the ID Manual and the TMEP.
Applicant may adopt the following identification, if accurate:
Class 35: Retail store and online retail store services featuring goods, equipment and supplies for farms and ranches, namely, livegoods, livestock and agriculture supplies, pets and pet supplies, hardware, automotive, home improvement, electronics, tools, housewares, lawn and garden, food and beverages, outdoor power equipment, sporting goods, firearms, ammunition, hunting equipment, camping equipment, fishing equipment, toys, apparel, footwear and cleaning products; retail store and online retail store services in the field of farm, agriculture, automotive, and household goods featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases
ID Manual. 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.
Please see the following requirement.
A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
Mark Description: The mark consists of black stylized letters “SF” centered behind a red right facing arrow. The background appears in white.
Color Claim: The color(s) black and red is/are claimed as a feature of the mark.
Mark Description: The mark consists of black stylized letters “SF” centered behind a red right facing arrow. The color white in the mark represents background and is not claimed as a feature of the mark.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or 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
/Jeane Yoo/
Jeane Yoo
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@uspto.gov
RESPONSE GUIDANCE