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:  January 22, 2020

 

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.

 

PLEASE NOTE: 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.

 

SUMMARY OF ISSUES:

• Identification of services.
• Disclaimer.
• Preliminary Amendment accepted.

 

NO LIKELIHOOD OF CONFUSION

 

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 OF SERVICES

 

Applicant must amend the recitation of services to provide an acceptable identification. 

 

The following wording is acceptable as written:

 

“organization of exhibitions for cultural or educational purposes” in International Class 41.

 

The remaining wording in the identification of services needs clarification because it does not clearly and adequately describe the exact nature of the services intended. 

 

Applicant may change this wording to the following, if accurate. 

 

“Education, training, entertainment in particular in the field of sport and entertainment, namely, {specify the exact services intended by their common commercial names and intended uses, e.g., operating of sports camps}; sporting and cultural activities, namely, sports training services, providing courses for improving sports performance, and organization of sports competitions and educational demonstrations in the field of sports; sports training and activities, namely, providing courses for improving sports performance; organization of sports competitions and educational demonstrations in the field of sports; vacation camps in the nature of summer camps and sports camps; arranging and conducting conferences, forums, colloquiums, seminars, and educational exhibitions for professional purposes in particular in the fields of sport, entertainment, business consultancy, marketing and sales for non-business and non-commercial purposes; arranging of contests and sports games and organizing community sporting events in the field of sports; providing information relating to organizing community sporting and cultural activities, contests and games; organization of exhibitions for cultural or educational purposes; services providing information on sports, education and entertainment in the nature of entertainment and educational services, namely, providing a website that displays various requests, reviews, recommendations, rankings, trackings, votes, and information relating to uncreated, unreleased, new, special, popular, and rare products, services, and events in the fields of pop culture, entertainment, education, and sports, all exclusively for non-business and non-commercial transactions and purposes” in International Class 41.

 

TMEP §1402.01.

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

DISCLAIMER

 

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 on the Supplemental Register.  See 15 U.S.C. §1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); 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 “FOOTBALL ACADEMY” because it is not inherently distinctive.  These unregistrable term(s) are generic for applicant’s services.  See 15 U.S.C. §1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §1213.03(b). 

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  Determining whether a mark is generic requires a two-step inquiry:

 

(1)       What is the genus of services at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of services?

 

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015) (citing In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of services is often defined by an applicant’s identification of services.  See In re Meridian Rack & Pinion, 114 USPQ2d at 1463 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

In this case, the application identifies the services as “Education, training, entertainment in particular in the field of sport and entertainment; sporting and cultural activities, namely, sports training, courses for improving sports performance, organization of sports competitions and demonstrations; sports training and activities, courses for improving sports performance, organization of sports competitions and demonstrations; vacation and sports camps; arranging and conducting conferences forums, colloquiums, seminars, shows or exhibitions for professional purposes in particular in the fields of sport, entertainment, business consultancy, marketing and sales; organization of contests, games, sports events, information campaigns and events for professional or other in particular in the field of sport and entertainment; organization of exhibitions for cultural or educational purposes; services providing information on sports, education and entertainment,” which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s services because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence from Internet dictionaries shows that FOOTBALL means “soccer” while ACADEMY means “A school for special instruction” and thus the relevant public would understand this designation to refer primarily to the genus of services because the applicant provides a school for special instruction in the field of soccer.

 

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

 

No claim is made to the exclusive right to use “FOOTBALL ACADEMY” 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.

 

PRELIMINARY AMENDMENT

 

On October 17, 2019, applicant filed a Preliminary Amendment to provide a signed declaration to support the application.  As the signed declaration relates back to the filing date, the Preliminary Amendment is hereby accepted and made of record.

 

QUESTIONS

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

/Marcie R. Frum Milone/

Trademark Examining Attorney

Law Office 116

571-272-9726

Marcie.Milone@uspto.gov

(email for informal communications only)

 

 

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 January 22, 2020 for

U.S. Trademark Application Serial No. 88631629

 

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. 

 

 

/Marcie R. Frum Milone/

Trademark Examining Attorney

Law Office 116

571-272-9726

Marcie.Milone@uspto.gov

(email for informal communications only)

 

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 January 22, 2020, 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.”