To: | Travel Smart Vacation Club Inc. (trademark@gpmlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88615574 - TRAVEL SMART - 430116us001 |
Sent: | December 20, 2019 08:16:46 AM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88615574
Mark: TRAVEL SMART
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Correspondence Address: |
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Applicant: Travel Smart Vacation Club Inc.
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Reference/Docket No. 430116us001
Correspondence Email Address: |
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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 20, 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.
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).
REQUIREMENT: COMPLETE MARK DESCRIPTION
REQUIREMENT: DISCLAIMER OF DESCRIPTIVE WORDING
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). An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/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).
In this case, applicant must disclaim the wording “TRAVEL” because it is not inherently distinctive. These unregistrable term(s) 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).
In this case, the term “travel” is defined as, “the act of going on a trip or going on vacation; to go from one place to another; make a journey or journeys. See, http://www.yourdictionary.com/travel. Applicant’s identification indicates that the function of its services is to enable transportation and assist in arranging vacations. Therefore, the wording “TRAVEL” in the applied-for mark is merely descriptive of a feature and characteristic 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 “TRAVEL” 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.
RESPONSE/CORRESPONDENCE INFORMATION & GUIDELINES
Arguments regarding any substantive refusal must be filed in a formal response to be considered. TMEP §709.05.
Informal communications with the examining attorney “may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal.” TMEP §709.05.
“USPTO employees cannot give advice on trademark law. It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals…. 37 C.F.R. §2.11.” TMEP §709.06.
Examining attorneys cannot provide any statements about applicants’ rights; “the examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re Am. Physical Fitness Research Inst. Inc., 181 USPQ 127, 127–28 (TTAB 1974); see also TMEP §1801.” TMEP §705.02
The trademark examining attorney may only provide additional clarification pertaining to the refusal(s) and/or requirement(s) in this Office action.
An e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response; all relevant e-mail communications will be placed in the official application record. See 37 C.F.R. §§2.62 (c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
How to respond. Click to file a response to this nonfinal Office action.
/N. Gretchen Ulrich/
Trademark Examining Attorney
Law Office 113
U.S. Patent & Trademark Office
phone: (571) 272-1951
gretchen.ulrich@uspto.gov
RESPONSE GUIDANCE