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:  November 14, 2019

 

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  

 

 

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.

 

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).

 

 

However, please note the following issues:

 

• Disclaimer statement must be amended to include FLYOVER
• Identification of services requires further clarification
• Mark description requires more detail

 

 

DISCLAIMER STATEMENT MUST BE AMENDED TO INCLUDE FLYOVER

 

Applicant must amend its voluntary disclaimer statement so that it also includes a disclaimer of the term FLYOVER.

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  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, applicant must also disclaim the wording FLYOVER because it is not inherently distinctive in relation to the services described as “entertainment, namely, cultural and tourist activities in the nature of flight simulator rides overlooking scenic sites” in Class 41.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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). 

 

The attached evidence from http://www.lexico.com/en/definition/flyover defines FLYOVER as a “low flight” that passes “over a specific location.” Applicant’s flight simulator rides that overlook scenic sites are therefore meant to mimic flyovers over particular locations. As such, the term FLYOVER appearing in the mark describes the purpose or function of a portion of applicant’s services and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FLYOVER” and “LAS VEGAS” 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. 

 

 

IDENTIFICATION OF SERVICES REQUIRES FURTHER CLARIFICATION

 

 

The services in Class 41 are described, in part, as “entertainment services.”

 

This portion of the identification of services is indefinite and must be clarified because applicant has not described the type of entertainment services and the current description can include any type of entertainment service without any limitation.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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 adopt the following wording, if accurate: 

 

Entertainment services, namely, providing amusement park services; Entertainment in the nature of an amusement park attraction; Entertainment in the nature of flight simulator rides; Entertainment in the form of displaying multi-sensory motion picture films; Amusement park and theme park services; Entertainment in the nature of an amusement park ride; Entertainment, namely, cultural and tourist activities in the nature of flight simulator rides overlooking scenic sites in Class 41

 

 

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.

 

 

MARK DESCRIPTION REQUIRES MORE DETAIL

 

 

The mark is currently described as:

 

The mark consists of a first line of text comprised of the single term FlyOver in the color red in stylized cursive letters with the first and fourth letters capitalized and the baseline of the letters appearing at an upward angle of approximately 40 degrees, and the letters from the first to the last decreasing in size. Below the letter "v" in a size smaller than that letter is a stylized illustration of a pair of aircraft wings in the color red pointing in the direction that the text is read. Below the first line of text and illustration is the second line of text comprised of the name LAS VEGAS in the color blue, all in capital letters substantially smaller than the text FlyOver and positioned to span below the letters "Over" from the first line of text, on a baseline of zero degrees even with the bottom of the letter "y" from the text FlyOver; and a starburst in the color red placed to the right and above the letter "s" that is slightly smaller in size than that letter. The color white is not part of the mark but appears as background.

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark since it does not reference the period appearing after the term FLYOVER.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of a first line of text comprised of the single term “FlyOver.” in the color red in stylized cursive letters with the first and fourth letters capitalized and the baseline of the letters appearing at an upward angle of approximately 40 degrees, and the letters from the first to the last decreasing in size. Below the letter "v" in a size smaller than that letter is a stylized illustration of a pair of aircraft wings in the color red pointing in the direction that the text is read. Below the first line of text and illustration is the second line of text comprised of the name “LAS VEGAS” in the color blue, all in capital letters substantially smaller than the text “FlyOver.” and positioned to span below the letters "Over" from the first line of text, on a baseline of zero degrees even with the bottom of the letter "y" from the text “FlyOver”; and a starburst in the color red placed to the right and above the letter "s" that is slightly smaller in size than that letter. The color white is not part of the mark but appears as background.

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

/Ahsen Khan/

Trademark Attorney

United States Patent & Trademark Office

Law Office 113

ahsen.khan@uspto.gov

(571) 272 4343

 

 

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 November 14, 2019 for

U.S. Trademark Application Serial No. 88577520

 

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. 

 

 

/Ahsen Khan/

Trademark Attorney

United States Patent & Trademark Office

Law Office 113

ahsen.khan@uspto.gov

(571) 272 4343

 

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 November 14, 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.”