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:  September 06, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the below issue(s).  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS:  The USPTO’s database of registered and pending marks has been searched and no conflicting marks were found that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

·         DISCLAIMER OF "CLUB" REQUIRED

·         AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

DISCLAIMER OF “CLUB” REQUIRED:

 

Applicant must disclaim the wording “CLUB” because it is not inherently distinctive. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Specifically, this wording is merely descriptive of a quality, characteristic, function, feature, purpose, or use 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). 

 

A “disclaimer” is a statement that an applicant does not claim exclusive rights to wording that others may need to use to describe their own goods or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). 

 

The disclaimer mark will not affect the mark’s appearance or remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, the attached dictionary evidence indicates that CLUB means “an organization for people who have a common interest in a particular activity or subject.”  The specimens of record indicate that applicant provides an online organization for people who have common interests, such as book clubs, sports, fitness, etc. 

 

Applicant may satisfy this requirement by submitting the disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CLUB” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to submit a disclaimer online using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED:

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SPECIFIED SERVICES

 

The wording “education” in the identification of services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

The wording “entertainment” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the particular entertainment service.  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.

 

The wording “entertainment services, namely, arranging for ticket reservations” in the identification of services is indefinite and 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.  For example, “Travel ticket reservation” is in International Class 39.  Therefore, applicant should amend the identification to specify it is arranging for ticket reservations for “entertainment events,” if accurate, to ensure proper classification of the services in Class 41.

 

For applicant’s convenience, following is an amended version of the identification of services that complies with the above clarification requirements. Suggestions are shown underlined.  Applicant must fill in the blanks as directed below.

 

Applicant may substitute any or all of the following amended identifications, if accurate:   

 

CLASS 41:     Education, namely, providing __________ {applicant must indicate how the education is provided, such as “classes, seminars, workshops”} in the field of __________ {applicant must also indicate the subject matter of the education, such as “history, science, mathematics”}; entertainment, namely, ___________ {applicant must specify type of entertainment, such as “live musical performances, football games, conducting parties”}; entertainment services, namely, arranging, organizing, conducting, and hosting social entertainment events; entertainment and educational services, namely, the presentation of seminars, lectures, workshops and panel discussions, all in the fields of music, movies, sports, cultural events and art; providing information relating to the organizing of educational, cultural, sporting, or entertainment exhibitions; providing a website featuring entertainment news and information specifically in the fields of music, movies, sports, cultural events, and art; entertainment services, namely, providing information by means of a global computer network in the fields of entertainment and cultural events; entertainment services, namely, arranging for ticket reservations for entertainment events; entertainment event booking; and on-line admission ticket agency services for entertainment, educational, sporting and cultural events

 

ID Manual Available Online

 

For further assistance with identifying and classifying the services, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Identification Amendment Advisories

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the scope of the services beyond those in the original application or as later acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

 

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  

 

 

 

/Kristin Carlson/

USPTO Trademark Examiner

LO 105

800-786-9199 (Trademark Assistance Center)

571-272-2240

kristin.carlson@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 September 06, 2019 for

U.S. Trademark Application Serial No. 88567436

 

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. 

 

 

Carlson, Kristin

 

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 September 06, 2019, 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.”