Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  December 16, 2019

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On December 16, 2019, the examining attorney and Courtney Jackson discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

• Disclaimer requirement
• Identification of goods and services

 

Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.

 

DISCLAIMER REQUIRED:

 

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 disclaim the wording “FIELD” for classes 35, 41 and 43 because it is not inherently distinctive.  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 The American Heritage Dictionary of the English Language (The American Heritage Dictionary of the English Language: Fifth Edition.  2018) shows this wording means “an area in which an athletic event takes place, especially the area inside or near to a running track, where field events are held.”  Thus, the wording merely describes applicant’s services because the wording describes where applicant is providing its advertising services in class 35, namely on athletic fields.  Additionally, the wording also describes the sports facilities in class 41 and the arena services in class 41 because the facilities and arenas are types of fields.

 

 

Applicant must also disclaim the wording “MILE HIGH” because it is not inherently distinctive.  These unregistrable term(s) are at best primarily geographically descriptive of the origin of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from http://milehighcity.com/, http://en.wikipedia.org/wiki/Denver and http://en.wikipedia.org/wiki/Greenwood_Village,_Colorado shows that ‘MIGH HIGH” is a generally known geographic place or location.  See TMEP §§1210.02 et seq.   Specifically it is the nickname for the city of Denver.  Commonly used nicknames for geographic locations are generally treated as equivalent to the proper geographic name of the place identified.  TMEP §1210.02(a); see, e.g., In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services where evidence showed that “Carolina” is used to indicate either the state of North Carolina or South Carolina); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 245 (TTAB 1976) (holding OLD DOMINION is “the accepted nickname for the State of Virginia”). The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by  applicant’s address because Greenwood Village is part of the Denver-Aurora-Lakewood metropolitan area.  See TMEP §1210.03.  Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

 

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

 

No claim is made to the exclusive right to use “FIELD” for classes 35, 41 and 43 and “MILE HIGH” for classes 16, 18 and 25 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 GOODS AND SERVICES:

 

The identification of goods is indefinite and must be clarified because certain items are overly broad and others are improperly classified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

 

International Class 9: computer bags

 

International Class 16: novelty desktop business card holders; wrapping paper; paper gift boxes; stickers; paper napkins; paper lunch bags; paper towels; notepads; bumper stickers; decals; paper pennants; paper flags; paper banners; greeting cards; paperweights; pens and pen sets; photographs; football trading cards; yearbooks in the field of [applicant must specify field or subject matter]; scorecards; printed materials, namely, printed tickets; posters; postcards; souvenir programs concerning [applicant must specify the field]; greeting cards; non-metal money clips; event programs; printed media guides for sporting and entertainment events; printed calendars

 

International Class 18: bags, namely, sports and duffel bags, backpacks, fanny packs, tote bags, computer bags [this item is properly classified in class 9], work bags, namely, [applicant must specify the common commercial name of the goods, i.e. briefcases, etc.], purses, handbags; wallets; credit card cases and holders; umbrellas

 

International Class 21: lunch bags not of paper

 

International Class 25: men's, women's, and children's clothing, namely, caps being headwear, hats, visors being headwear, headbands, ear muffs, belts, wristbands as clothing, t-shirts, tank tops, pajamas and sleep wear, tops as clothing, shirts, sweaters, sweatshirts, jackets, vests, ponchos, capes, neckties, suspenders, cloth bibs, jerseys, coats, robes, parkas, ponchos, gloves, scarves, snow suits, mittens, aprons, bottoms as clothing, shorts, sweatpants, jeans, pants, leggings, tights, skirts, dresses, socks, underwear, swimwear; footwear

 

International Class 35: promoting business events, sports compeitions, and entertainment events of others; promotional sponsorship of sporting and entertainment events; providing concession stands featuring food, beverages, clothing, sporting equipment, and souvenirs; promoting sponsorship of sports and entertainment events; providing facilities for business meetings; electronic billboard advertising; development, operation, and administration of digital signage systems and digital advertising systems for others, namely, providing advertising space by electronic means and global computer information networks; retail store services and online retail store services featuring licensed merchandise

 

International Class 41: providing sports facilities; providing recreation facilities; entertainment services in the nature of organizing and presenting live sporting events, games, and matches; entertainment services in the nature of presenting live musical performances; providing guided tours of stadium facilities; providing information in the field of sports and entertainment and related events by means of the internet, telephone, and digital transmission; operating stadium suites for entertainment event-viewing purposes; entertainment services in the nature form of professional, amateur, and junior football games; educational services, namely, conducting classes, seminars, and workshops in the field of football; educational services in the nature of football camps and instruction in the nature of football clinics; rental of stadium facilities; organizing and conducting fantasy sports contests, sweepstakes, and online sports competitions; entertainment services, namely providing new information, online non-downloadable podcasts, web casts, online newsletters, and online journals, namely, blogs, all of the foregoing in the field of sports; entertainment services, namely, conducting contests to obtain entrance to upgraded stadium facilities, restaurants, lounges, and suites; arranging and conducting youth football programs; entertainment services in the nature of fantasy football leagues; ticket reservation and booking services for entertainment, cultural, and sporting events; providing a sports broadcasting website featuring non-downloadable videos in the field of sports; entertainment services, namely, rental of stadium facilities

 

International Class 43: arena services, namely, providing general purposes facilities for sports, concerts, conventions, community festival events, business events, consumer shows, trade shows, artistic activities, and educational events; entertainment services, namely, providing stadium facilities [this item is properly classified in class 41]; providing social function facilities in the nature of stadium suites for event-viewing purposes; restaurant, bar, and catering services

 

 

 

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.

 

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 Section 1(b):

 

(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 8 classes; however, applicant submitted a fee(s) sufficient for only 6 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 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.

 

 

 

 

 

 

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

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.  

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 December 16, 2019 for

U.S. Trademark Application Serial No. 88603560

 

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. 

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@uspto.gov

 

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 December 16, 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.”