Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 24, 2021

 

 

This Office action is in response to applicant’s communication filed on 02/17/2021.  The applicant argued against refusal to registration under Section 2(d) of the Trademark.  On the basis of these arguments, the refusal is withdrawn.  The applicant did not address (1) the identification of services, (2) the query concerning the significance of the term “GENTING” (3) the requirement for a complete mark description.  As a result, these requirements are maintained and made FINAL.

 

Requirement for Acceptable Identification – Final Action

 

The identification of services is indefinite and must be clarified because the exact nature of some of the services to be provided is unknown due to the use of unacceptably broad wording.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, the identification of services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.

 

Applicant may adopt the following identification, if accurate: 

 

Class 35:

 

Business management of temporary accommodations in the nature of hotels, motels, inns and guesthouses for others

 

Class 41:

 

Education, namely, [describe the nature of the educational  services provided and subject matter of the services]; providing training [specify format e.g. classes, workshops, seminars, etc.] in the field of [specify subject matter]; entertainment, sporting and cultural activities, namely, [specify services by common commercial name]; amusement park and theme park services; providing amusement arcade services; booking of seats for shows; bookmobile services; providing casino facilities for gambling; casino services; leasing of casino game equipment; cinema theaters; movie showing; club services, namely, [specify type of club e.g. golf club, country club, comedy club, night club, etc.] services; arranging and conducting of colloquiums, concerts, conferences, congresses, seminars, symposiums, workshops and training in the field of [specify subject matter], beauty contests and exhibitions for cultural or educational purposes and fashion shows for entertainment purposes; cultural, educational or entertainment services relating to fine art provided by art galleries; disc jockey services; discotheque services; entertainment services, namely, [specify by common commercial name]; providing entertainment information; conducting fitness classes; gambling services; gaming services in the nature of casino gambling; game services, namely, providing on-line video games from a computer network; providing golf facilities; conducting guided tours of [specify where tours take place, e.g. historical homes, wineries, nature parks, etc.]; health club services for physical exercise ; holiday camp services; karaoke lounge services; nightclub services; organization of competitions, namely, [specify type of competitions, e.g. athletic, spelling bees, cooking, etc.]; organization of exhibitions for cultural or educations purposes; organization of lotteries; organization of balls; organization of social entertainment events; party planning; presentation of variety shows; presentation of live [indicate type of performance, e.g. music, singing, dancing, etc.] performances; providing recreation facilities; sport camp services; ticket agency services; provision of advice, information and consultation in relation to the afore-mentioned services; Providing theme park facilities; Theme park services; Amusement park and theme park services; Amusement arcade services; Amusement center services; Amusement centre services; Amusement park services; Providing amusement arcade services; Providing amusement facilities; Providing amusement parks; Amusement park and funfair attractions services; Production of live amusement park shows; Entertainment in the nature of an amusement park ride; Entertainment in the nature of an amusement park show; Entertainment services in the nature of recreation and amusement parks; Rental of amusement machines and apparatus; Entertainment in the nature of a water park and amusement center; Entertainment in the nature of a water park and amusement centre; Entertainment services in the nature of an amusement park show

Class 43:

 

Providing of food and drink; temporary accommodation; bar services; boarding house services; café services; cafeteria services; rental of chairs, tables, table linen, glassware; rental of cooking apparatus; rental of water dispensers; food and drink catering; food sculpting; providing temporary lodging at holiday camps; hotel services; resort hotel services; making hotel reservations for others; rental of meeting rooms; motel services; restaurant services; self-service restaurant services; snack-bar services; rental of temporary accommodation; making temporary accommodation reservations for others; rental of tents; tourist home services; rental of transportable buildings; provision and rental of banquet and social function facilities space for food and drink services; boarding of animals; making reservation for [specify what is being reserved, e.g. restaurants, meals, temporary lodging, etc.] for others; making hotel reservations and bookings for others; providing a website for making reservations and bookings for hotels via the internet; providing online information relating to hotel reservations; making hotel reservations for others; agency services for booking of hotel accommodation; provision of advice, information and consultation in relation to the afore-mentioned 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).

 

ID Manual Online

 

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.

 

Classification

 

If applicant adopts the suggested amendment of the identification of services, then applicant must amend the classification to International Classes 35, 41, and 43.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

Combined Application Requirements

 

The application identifies 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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

 

Significance of Term – Final Action

 

To permit proper examination of the application, applicant must specify whether “GENTING” in the mark has any meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §§809, 814.  If the wording has meaning in a foreign language, applicant must provide an English translation, and may use the following format:  The English translation of “GENTING”is “{insert translation}”.  TMEP §809.03. 

 

Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement:  The wording “GENTING” has no meaning in a foreign language. 

 

Id.

 

Mark Description Incomplete – Final Action

 

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.  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: 

 

The mark consists of the wording “GENTING SKYWORLDS” in stylized letters positioned beneath the design of a city skyline superimposed on the design of clouds containing four-point stars.

 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 February 24, 2021 for

U.S. Trademark Application Serial No. 88918009

 

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. 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 February 24, 2021, 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.”