| To: | Las Vegas Sands Corp. (TRADEMARKS-LASVEGAS@LRRC.COM) |
| Subject: | U.S. Trademark Application Serial No. 88517844 - PAIZA - 150495-00009 |
| Sent: | September 06, 2019 03:48:54 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88517844
Mark: PAIZA
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Correspondence Address: |
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Applicant: Las Vegas Sands Corp.
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Reference/Docket No. 150495-00009
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 06, 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.
This application was filed with the USPTO on August 9, 2019.
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/or Services
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
The identification for “publications” in International Class 016 is indefinite and too broad and must be clarified because the word does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x). Specifically, applicant must clarify whether “publications” identifies print publications in International Class 16, electronic publications in International Class 9 or 41, and/or online/Internet publications in International Class 41, and amend the identification to provide the additional information specified below for such goods and services.
If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications. TMEP §§1402.03(e), 1402.07(b). For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16. TMEP §1402.03(e).
If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See id. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id. Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41. See TMEP §§1402.07(b), 1402.11(a)(x).
The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets):
Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;
Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or
Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41.
“Goods in trade” are items that an applicant sells or transports in commerce for use by others. See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06. Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers. TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).
Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether: the goods are simply the conduit or necessary tool useful only to obtain applicant’s services, the goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and the goods are neither sold separately from nor have any independent value apart from applicant’s services. In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06. None of these factors is necessarily dispositive. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.
Applicant may adopt the following identification, if accurate:
Class 009: Downloadable electronic publications in the nature of brochures and booklets in the field of hotel and casino accommodations; electronic publications, namely, brochures and booklets in the field of hotel and casino accommodations
Class 016: Printed publications, namely, brochures and booklets in the field of hotel and casino accommodations; stationery; printed visuals in the nature of {specify type of goods, e.g., graphic prints, posters, paper banners} as promotional materials; pens; paper napkins; note paper; loose leaf paper; loose leaf pads
Class 041: Non-downloadable electronic publications in the nature of brochures and booklets in the field of hotel and casino accommodations.
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.
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 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 sufficient for only 1 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Fees for Adding Classes
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.
Inquiry on Wording in Mark – Appears to Be Foreign with Latin Characters
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement: The wording “PAIZA” has no meaning in a foreign language.
Id.
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
Janet Lee
/Janet H. Lee/
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1053
Email: janet.lee6@uspto.gov
RESPONSE GUIDANCE