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:  September 08, 2020

 

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

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.

 

SUMMARY OF ISSUES:

• Amendment of Identification of Services Required
• Multi-Class Advisory
• Substitute Specimen Required

 

AMENDMENT OF IDENTIFICATION OF SERVICES REQUIRED

 

The wording “Providing, operating and rental of facilities, premises, venues, ballrooms, lounges, online channels and online mediums for events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “Providing, operating and rental of on-line facilities for real-time interaction with other computer users for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs” in Class 38; “Providing, operating and rental of fitness facilities; providing, operating and rental of sports facilities for games and recreational events” in Class 41; and “Providing, operating and rental of general purpose facilities for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs; providing, operating and rental of social function facilities for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs” in Class 43.

 

The wording “Co-production and distribution of online events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs for broadcast, telecast, display or distribution via the Internet and online” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “Distribution of data, namely, online events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs via the internet” in Class 38; and “Entertainment services in the nature of production and distribution of online events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs for broadcast, telecast, display or distribution via the Internet and online” in Class 41. Please note the distribution services in Class 41 refers to the making of the events and programs and making them available to others (for example, movie theaters or television stations) for display to the public. The distribution services in Class 38 refers to the activity of distributing the events and programs to the public.

 

The wording “Entertainment and event ticketing services” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “ticketing agency services for entertainment events; ticketing agency services for special events” in Class 41; and “event ticketing services in the nature of personal services in the nature of waiting in line for others to obtain tickets to special events” in Class 45.

 

Applicant has classified the following goods and/or services in International Class 41:  “Bar and cocktail lounge services; catering services.”  However, the proper classification for each item is as follows:  “Bar and cocktail lounge services; catering services” in Class 43.

 

Additionally, applicant has provided the application fee(s) for only one international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Applicant may adopt the following identification, if accurate (examining attorney’s suggestions in bold font):

 

Class 38:         Providing, operating and rental of on-line facilities for real-time interaction with other computer users for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs; Distribution of data, namely, online events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs via the internet

 

Class 41:         Providing, operating and rental of fitness facilities; providing, operating and rental of sports facilities for games and recreational events; Entertainment services in the nature of production and distribution of online events and programs, namely, creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs for broadcast, telecast, display or distribution via the Internet and online; ticketing agency services for entertainment events; ticketing agency services for special events

 

Class 43:         Providing, operating and rental of general purpose facilities for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs; providing, operating and rental of social function facilities for creative performance, performing art, music, concert, fitness, game, recreational, civic, cultural, festive, educational and entertainment events and programs; Bar and cocktail lounge services; catering services

 

Class 45:         event ticketing services in the nature of personal services in the nature of waiting in line for others to obtain tickets to special events

 

See TMEP §§ 1402.01, 1402.03.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

MULTI-CLASS ADVISORY

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies based on use in commerce that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

Examples of specimens. Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

SUBSTITUTE SPECIMEN REQUIRED

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 41, which is required in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as “ONCE SOMERVILLE”.  However, the drawing displays the mark as “ONCE”.  The mark on the specimen does not match the mark in the drawing because it adds the additional wording “SOMERVILLE”.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the services in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.

 

Examples of specimens. Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(2)        Submit a request to amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, the additional wording in the specimen would require a further search of the database for confusingly similar marks under Section 2(d) and would require republication to provide proper notice to the public. See TMEP § 807.14.

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

RESPONSE GUIDELINES

 

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. 

 

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

 

 

/Ryan Witkowski/

Examining Attorney

Law Office 122

(571) 272-7584

ryan.witkowski@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.