Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-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). A link to the appropriate TEAS response form appears at the end of this office action. 

 

Issue date:  December 05, 2019

 

The undersigned trademark examining attorney has reviewed the referenced application, as well as the voluntary amendment. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

The office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Registration Refused – Country Of Origin

 

This refusal applies to Classes 9, 12, 16, 25, 28, 32, 35, 36, 37, 38 and 41.

 

Registration is refused under Trademark Act Section 44(e) because the foreign registrations are not from applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Specifically, applicant has submitted foreign registrations from Qatar to support applicant’s Section 44(e) basis. However, the application shows that applicant is domiciled, incorporated, or organized in Switzerland.

 

To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04.

 

Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04. 

 

Thus, to overcome this refusal, applicant may provide the following written statement for the record:  “Applicant has had a bona fide and effective industrial or commercial establishment in Qatar as of the date of issuance of the foreign registrations.” TMEP §1002.04. If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.01.

 

The Marks In The Drawing And Foreign Registrations Do Not Match

 

This requirement applies to Classes 9, 12, 16, 25, 28, 32, 35, 36, 37, 38 and 41

 

The drawing of the mark is not acceptable because it is not a “substantially exact representation” of the mark as it appears in the foreign registrations. See 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01. Specifically, the marks do not correspond because the U.S. application contains a standard character claim and the foreign application or registration does not.

 

Applicant may respond by satisfying one of the following:

 

(1)        Submit the following statement in the U.S. application: “Under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).”; or

 

(2)        Delete the standard character claim from the U.S. application and proceed with a special form drawing by submitting an accurate and concise description of the literal and design elements in the mark. The following mark description is suggested, if accurate: The mark consists of the stylized wording “WORLD CUP 2022”. 

 

See 37 C.F.R. §§2.37, 2.52(b), 2.61(b); TMEP §§807.03(f), 808.02, 1011.01.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods and services. Further, it is overly broad because it encompasses goods and services in more than one international class. In addition, some of the goods and services appear to be misclassified.

 

The identification contains parentheses. Generally, applicants should not use parentheses in identifications so as to avoid confusion with the USPTO’s practice of using parentheses to indicate goods and services that have been deleted from registrations. 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 and incorporate the parenthetical information into the identification.

 

The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that appears within curly brackets offers guidance. And wording that should be deleted is shown in strikethrough.

 

Furthermore, particular wording in the U.S. application’s identification is outside the scope of goods and services in the foreign registrations upon which the U.S. application relies. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07. For a U.S. application based on Section 44(e), an applicant may list only goods and services that are within the scope of the goods and services in the foreign registrations. 37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

The wording that is outside the scope is in bold, italic, capital letters and/or explained in square brackets in the suggested identification below.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)        Amending the identification of goods and services in the U.S. application to correspond to the goods and services in the foreign registrations, if possible, to ensure that all goods and services beyond the scope of the foreign registrations are deleted from the U.S. application. The suggested identification below satisfies this option; or

 

(2)        Substituting a basis under Section 1(a) or 1(b) for those goods and services in the U.S. application that are beyond the scope of the foreign registrations. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Applicant may adopt the following identification, if accurate:

 

“(Based on Section 44e) Paint,” in International Class 2;

 

“(Based on Section 44e) Metal alloys for the manufacture of wheels,” in International Class 6;

 

“(Based on Section 44e) Eyeglasses, sunglasses, diving and swimming goggles, cases, and cords and chains [outside the scope] for sunglasses and eyeglasses; binoculars; magnets and decorative magnets; directional compasses; automotive batteries; electronic instrument clusters; thermostats and radiator caps; powertrain electronics for motors; body and chassis electronics; remote door lock systems; Hi-Fi audio systems and components; [outside the scope] apparatus for recording, transmitting, editing, mixing and reproducing of sound and/or images; radios; televisions; flat screens; liquid crystal displays; high definition and plasma display screens; home cinema systems, namely, audio speakers, headphones; video recorders; CD players, portable CD players; DVD players; MP3 players; electronic apparatus for reading digital music; cassette players, portable cassette players; mini-disc players; portable radios; loudspeakers; headphones; earphones; microphones; remote controls, and voice-activated remote controls for radios, televisions, stereos, electronic games and video games; navigation apparatus for vehicles; personal digital assistants (PDA); computers; tablet computers, data processors; computer keyboards; computer monitors; modems; computer carrying cases; computer mice; pads for computer mouses; electronic pocket translators; dictating machines; electronic notebooks and agendas; scanners; document printers; photocopy machines; facsimile TRANSMISSION machines; telephones, telephone answering apparatus machines; mobile telephones; mobile phone covers; smartphones, video telephones; devices for hands-free use of mobile phones; earphones and headsets for mobile phones; keyboards for mobile phones; mobile phone straps; specially adapted bags for carrying mobile phones; mobile phones with integrated cameras and video cameras; smartwatches; [outside the scope] calculating machines; credit card readersing machines; cash currency exchanging machines; automated teller machines (ATM); video cameras, camcorders; photographic equipment, namely cameras, movie projectors; exposed photographic films; photographic slides; flash bulbs; camera and camera accessory cases and straps; cases and straps specially adapted for camera accessories; batteries; karaoke machines and recorded and downloadable software programs for operating karaoke machines; video game discs; voice-activated or hand-operated game control pads and game controllers; {moved to Class 28} virtual reality headsets; [outside the scope] pre-recorded or and downloadable computer software, namely, including computer game software; recorded and downloadable computer software programs for database management; recorded and downloadable databases in the field of sports; recorded and downloadable computer screen savers software PROGRAMS; blank magnetic, numerical digital or analogical data carriers for recording sound or images; video discs, video tapes, magnetic tapes, magnetic discs, DVDs, floppy discs, optical discs, compact discs, mini-discs, CD ROMs, all the aforementioned being blank or pre-recorded with music, sound or images (which may be animated); holograms apparatus; magnetically-encoded cards, namely, (encoded including gift vouchers) cards; memory adapters being (computer equipment) hardware; memory cards; memory sticks (blank or prerecorded) prerecorded memory devices in the nature of flash memory cards featuring personal information for identifying particular users and guests; microchip cards; microchip or magnetically-encoded credit cards, microchip or magnetically-encoded phone cards, microchip or magnetically-encoded cards for automated teller and money exchange machines; microchip or magnetically-encoded prepaid cards for mobile phones; microchip or magnetically-encoded stored value travel and entertainment cards, microchip or magnetically-encoded cheque guarantee and debit cards; non-magnetic credit cards of plastic; {moved to Class 16} electronic numeric blackboard; electronic chassis frame control devices for vehicles; [outside the scope] security alarms; electronic vehicle lock system including remote control; [outside the scope] windsocks for indicating wind direction; solar cells and panels for electricity generation; gauges; [outside the scope] distance measuring apparatus; speed measuring and indication equipment, namely, laser speed detectors, speed indicators, and speedometers; tire pressure sensor, tire pressure gauge; downloadable electronic publications, namely, books, magazines, brochures, pamphlets, flyers, newspapers and newsletters in the fields of sports, sports events, sports records, athletes, sports personalities and celebrities all available via databases and the internet; downloadable electronic road maps; audio receivers; audio amplifiers; television tubes; cathode ray tubes; SET-TOP BOXES, NAMELY, recorded and downloadable computer software and hardware, including set-top boxes which can for converting, supplying, receive [outside the scope] and transmitting audio and video data; disc drives; semi-conductors; [outside the scope] packaged semi-conductors; integrated circuits containing programming used for audio, video or computer data processing; rechargeable batteries; audio and video data processors and converters; data transmission cables; speedometer cables and service parts; [outside the scope] protective sports helmets; magnetically encoded identification bracelets; electronic tickets, being magnetically encoded cards; tickets in the form of magnetically encoded cards; contact lenses, receptacle for the cleaning and storing of contact lenses [outside the scope] downloadable and recorded video game software; virtual reality headsets for games,” in International Class 9;

 

“(Based on Section 44e) Bicycles; motorbikes; motor scooters; automobiles; recreational vehicles (including SUV); [outside the scope] trucks; vans; caravans being trailers; buses; minibuses; trailers; [outside the scope] refrigerated vehicles; motorhomes (electric, petrol or diesel operated or other type of motor, known or invented, including hybrid motors); [outside the scope] aeroplanes; boats; hot-air balloons, airships; tires, inner tubes for tires, rubber tread patterns for use in retreading of tires, material and kits for the repair of tires and inner tubes consisting primarily of tire patches and adhesive rubber patches for the repair of tires and inner tubes; adhesive rubber patches for the repair of tires and inner tubes, valves for vehicle tires, tire inflation apparatus, namely, tire inflators; non-skid devices for vehicle tires, namely, spikes and snow chains; wheels, wheel rims; vehicle wheel parts, namely, wheel rim bands, hubcaps, spare tire covers, car brake parts; [outside the scope] alloys for wheels; {moved to Class 6} automobile accessories, namely, sun screens shields, roof racks, ski racks, bicycle racks, seat covers for vehicles; and cushions; [outside the scope] fitted car covers being (vehicle accessories); headlight shields; taillight covers; spoilers; car glass (for headlights); car glass (for taillights); convertible tops; deflectors; sun roofs; grill guards; airbags; steering wheels; license plate holders; car security alarm systems; spare parts for motor vehicles; car dashboard; chassis for terrestrial vehicles; seat belt cushions); wing mirror covers; cars for children; [outside the scope] prams being baby carriages; carpets, rugs, mats (also for cars); car dusters; tool boxes; [outside the scope] baby strollers; car safety seats for babies or children; anti-skid chains for cars; [outside the scope] engines for land vehicles,” in International Class 12;

 

“(Based on Section 44e) Bracelets of silicone featuring sports team logos,” in International Class 14;

 

“(Based on Section 44e) Money clips for holding bank notes; table cloths of paper; napkins of paper; plastic shopping bags; [outside the scope] bags of paper; invitation cards; greeting cards; folded cardboard boxes; [outside the scope] gift wrapping paper; paper coasters, placemats and table sets being napkins; garbage bags of paper or plastic; food STORAGE wrappers; PAPER coffee filters; labels of paper or cardboard; paper towels; toilet paper; make-up removing towelettes made of paper; boxed facial tissues; paper handkerchiefs; stationery; and school supplies (except equipment), namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, highlighting markers, folders, notebooks, paper, drawing rulers, protractors as drawing instruments, paper clips, pencil sharpeners, writing grips, glue for stationery or household purposes and bookmarks; magnetic boards being (stationery) articles; typewriting machines, namely, typewriters; typewriting, copying, and writing paper being (stationery articles); envelopes; themed pads of writing paper; blocks of paper, namely, memo pads; notebooks; scribble pads; binders; cardboard boxes for archiving boxes; document sleeves being document covers; book covers; bookmarks; lithographies, paintings, (framed or unframed); painting art pads, colouring books; drawing and children’s activity books; luminous paper; adhesive note paper; crepe paper; tissue paper; heat transfer paper; heat sensitive paper; [outside the scope] staples; staplers; flags of paper; pennants of paper; writing instruments; fountain pens; pencils; pens; fountain pen sets comprised of fountain pens and pen holders; pencil sets comprised of pencils and pencil holders; porous-point pens; colouring pens; ball-point pens; broad-tip markers; ink, namely, writing ink; ink pads; rubber stamps; paint boxes; paint and {moved to Class 2} colouring pencils; chalk; decorations for pencils being (stationery articles); printing blocks; magazines featuring sports, sports events, sports records, athletes, sports personalities and celebrities; newspapers; books and journals, particularly dealing with in the field of athletes or sport events; printed teaching materials in the field of sports, sports events, sports records, athletes, sports personalities and celebrities; printed sports and tournament schedules (for recording results) event programs; event albums; photograph albums; autograph books; address books; diaries; personal organisers; roadmaps; entry tickets; printed airline tickets and boarding passes; bank cheques; printed timetables; pamphlets and brochures in the field of sports, sports events, sports records, athletes, sports personalities and celebrities; comic strips; collectable trading cards; sports trading cards; bumper stickers; stickers; sticker albums; calendars; posters; photographs; postcards; foreign postage stamps, postage stamps for collectible purposes; commemorative stamp sheets; advertising signs and banners of paper or cardboard; decals; office requisites (except furniture), namely, correcting fluids for type, paper hole punches, rubber bands, numbering machines, paper shredders, envelope sealing machines for offices, paper cutters for office use, office check writing and engraving machines; correction fluids for type; rubber erasers; pencil sharpeners; stands for writing implements; paper clips; drawing pins; drawing rulers; adhesive tape for stationery purposes, dispensers for adhesive tape; stencils; clip boards; notepad holders; bookends; seals; [outside the scope] non-magnetically encoded prepaid phone calling cards, ATM cards, travel and entertainment cards, cheque guarantee cards and debit cards made of paper or cardboard;  credit cards (not encoded) of paper or cardboard; luggage tags; {moved to Class 18} passport holders; lanyards of paper for ID cards [outside the scope] non-magnetic credit cards of plastic,” in International Class 16;

 

“(Based on Section 44e) Luggage tags,” in International Class 18;

 

“(Based on Section 44e) Clothing, namely, {specify articles of clothing, e.g., tops and bottoms as clothing}; footwear; headgear, namely, headwear; shirts; knitted garments, namely, knit shirts and dresses; jerseys, pullovers, tank-tops; T-shirts; vests; singlets; dresses; sports dresses; skirts; sports skirts; underwear; swimwear, bikinis; tankinis; bath robes; shorts; pants; sweaters; bonnets; caps; hats; scarves; headscarves; sashes for wear; shawls; visors; peaked caps being headwear; warm-up suits; sweatshirts; jackets; sports jackets; stadium jackets; blazers; rainwear; coats; uniforms; ties; wristbands as clothing; anti-sweat wristbands as clothing; headbands; finger-bands; {moved to Class 28} sports bracelet of silicone; {moved to Class 14} gloves; aprons; bibs (not of paper); pyjamas; toddler and infant playwear suits; clothing for babies, namely, infantwear; socks and hosiery; suspenders; belts; braces as suspenders; sandals, thong sandals; athletic footwear, namely, outdoor shoes, hiking shoes, basketball shoes, cross-training shoes, cycling shoes, indoor sports shoes, running and track-field shoes, flip-flops, indoor and outdoor football shoes (indoor and outdoor), football boots, canvas shoes, tennis shoes, urban sports shoes, sailing shoes, aerobic shoes; sports apparel, namely, fleece tops, jogging suits, knit sportswear shirts, sport casual pants, polo shirts, sweatshirts, sweatpants, soccer-style shirts, rugby-style shirts, socks, swimwear, tights and leg warmers, tracksuits, functional underwear, singlets, bra tops, leotards, wristbands as clothing, headbands, gloves, snow suits, snow jackets, snow pants,” in International Class 25;

 

“(Based on Section 44e) Games, namely, card games, building games, tabletop games, memory games, target games, trading card games and parlour games;  and playthings, namely, dolls, mechanical toys, molded toy figures, plush toy animals and snow globes; sport balls; board games; tables for table football; micro-jerseys being miniature replicas of football jerseys for toys; dolls and plush toy animals; toy vehicles; puzzles; balloons; inflatable toys; playing cards; confetti; articles for gymnastics and sport, namely, gymnastic apparatus, balance beams, gymnastic horizontal bars, gymnastic parallel bars, gymnastic training stools, gymnastic vaulting horses, pommel horses, springboards and gymnastic apparatus; appliances for gymnastics; football equipment, namely, footballs, gloves, knee, elbow and shoulder pads, shin guards and football goals; football goal walls; sport bags and containers cases specially adapted for carrying sports articles equipment; plastic and paper party hats being (toys); hand-held electronic games adapted for use with television receivers only; joysticks for video games; video games; {moved to Class 9} video game machines; video gaming consoles; hand-held electronic game machines with liquid crystal displays; hand-held electronic games other than those adapted for use with television receivers only; gamepads, namely, video game interactive control floor pads; steering wheels and dancing mats being interactive controls for video games and dancing mats for video games; foam hands being (toys) novelty items; toy robots for entertainment; arcade games; replica scale models of aircraft; toys for pet animals; scratch cards for playing lottery games; kites; roller skates; scooters being (toys); skateboards; virtual reality headsets for games {moved to Class 9} voice-activated or hand-operated game control pads and game controllers; finger bands, namely, athletic supporting goods in the nature of finger sleeve supports,” in International Class 28;

 

“(Based on Section 44e) Soft drinks; juices; fruit beverages made containing of juice and flavoured juice; concentrates, syrups and powders for making soft drinks; mineral and aerated waters; other non-alcoholic beverages, namely, soft drinks; energy drinks, isotonic drinks, hypertonic soft drinks, hypotonic soft drinks; fruit and vegetable drinks and juices; diet beverages, namely, diet soft drinks; sports drinks; iced fruit drinks; iced soft drinks; flavoured soft drinks; non-carbonated, non-alcoholic frozen fruit-flavoured beverages; beverages sports drinks enriched with added vitamins not for medical use; beers; blond beers; ales; stouts; low-alcohol beer; non-alcoholic beer,” in International Class 32;

 

“(Based on Section 44e) Advertising services; business management; business administration; [outside the scope] employment agency services; personnel recruitment services; advertising agency services; advertising services through sponsorship; online advertising services; information, advisory and consultancy services relating to business management and business administration provided online or via the Internet; [outside the scope] advertising and promotional services; dissemination of advertising and promotional materials; provision and rental of advertising space and publicity material; publication of publicity materials and texts; [outside the scope] rental of advertising time in film credits; television and radio advertising services; advertising services featuring in the form of animation; promotion of sports events in the domain of football; promotions of goods and services of third parties; business sponsorship research in relation to football competitions; compilation of publications for use as web pages on the Internet or on wireless electronic communication device; [outside the scope] providing space on web sites via the Internet for advertising goods and services; providing an online marketplace for buyers and sellers of goods and services; providing online auction services; [outside the scope] compilation of business directories for publishing on the Internet or on wireless electronic communication device; promotional marketing services; sport promotion and public relations promotion agency services; market study services; marketing research services; public opinion polling services; organisation of events, exhibitions, trade fairs and trade shows for commercial, promotional and advertising purposes; organisation of publicity for commercial exhibitions; database management services; compilation of statistics; services in the field of data collection and of data and statisticals and other information on sports performances; business management and business organisation consultancy; business consultancy services; organising of promotional competitions, namely, promoting the goods and services of others by means of contests; providing business information; publicity advertising of sports events in the domain of football; retail store services, including online retail store services in relation to the field of goods of common metal, machines and machine tools, hand tools and implements, optical, and audio-visual, and magnetic and electrical/electronic apparatus/equipment, medical apparatus/equipment, lighting, and heating, and cooking, and refrigerating, and drying and ventilating apparatus/equipment, vehicles and their accessories, goods of precious metals, jewellery and chronometric instruments, badges and pins, musical instruments, paper and cardboard goods, printed matter and stationery, tickets for sporting events, leather and imitation leather goods, luggage and bags and holders, umbrellas, house ware housewares, furniture, promotional and display articles, textile goods, clothing, and headgear and footwear, embroidery, and ribbons, and braid and derivative goods, floor/ground coverings, games, and playthings and sporting articles, food and food products, soft drinks and alcoholic drinks, solvents, paraffin, wax, bitumen and petroleum, fuels, oils, lubricants, transmission fluids, brake fluids, anti-freeze agents, coolants, hydraulic fluids, greases, gasoline, motor gasoline, diesel fuel, fuel gas, flammable gas, bio fuel, hubcaps, tires, tire covers, alloys for wheels, sun screens, roof racks, sports racks, seat covers, car covers, [outside the scope] potato chips, French fries, milk, milk drink products, yoghurt drinks, milk shakes, dairy products, cheese, soya milk being a (milk substitute), soft drinks, mineral and aerated waters, energy drinks, isotonic drinks, fruit and vegetable drinks and juices, beers, ales, non-alcoholic beer, coffee, tea, cocoa, cakes, cookies, crackers, candies, ice cream, confectionery, chocolate confectionery, chocolate, corn chips, mustard, vinegar, sauces being (condiments), hamburger sandwiches, cheeseburger sandwiches, sandwiches filled with fish, meat or vegetables, hot dog sandwiches, enabling customers to view and purchase these items on the market or on the Internet or wireless electronic communication; retail convenience store services in this class including retailing of featuring food and beverage products; retail sale and supply of food and beverages through providing vending machines featuring food and beverages; retail sale of store services featuring food in for restaurants, cafeterias, bakeries, butcher shops, canteens, delicatessen shops, (ice cream and yogurt shops, cafés, biscuit shops); retail store services, including online retail store services in relation to the field of fuel, fuel gas, kerosene, biofuel, oils and engine grease, lubricants and greases, oils and liquids hydraulic transmission, fluids for hydraulic circuits and hydraulic oils, enabling customers to view and purchase these items on the market or on the Internet or wireless electronic communication; business administration services for the processing of sales made on the Internet or on wireless electronic communication device; invoicing services; sales promotion, namely, providing advantage programs for customers; [outside the scope] ticket sales promotion services in the field of tickets; customer loyalty services and customer club services for commercial, promotional and /or advertising purposes; distributing loyalty and encoded member cards which may hold personal user identity data for controlling access to sports stadiums;  {moved to Class 36} archiving of data in a central database, namely, for still and moving images [outside the scope],” in International Class 35;

 

“(Based on Section 44e) Insurance services, namely, underwriting, issuance and administration of life, health, accident and fire insurance; financialNG services; monetary services; real estate services; financial payment management; issuing vouchers to reward customer loyalty, which may contain personal information about the identity of the cardholder and allow access control at sports stadiums; [outside the scope] issuance and management of credit cards and travellers’ cheques; banking services; automated banking machine (ATM) services; electronic payment services made by prepaid cards; mobile payment services; [outside the scope] credit and investment loan services; cheques guarantee card services; financial services in relation to cyber money; electronic wallet services (payment services); electronic fund transfer services; standing transfer order services (financial services), including giro account services; telegraphic (banking) transfer services; online invoicing services (financial services); interest rate derivative products; currency and foreign exchange services; safe deposit services; home banking services; postal cheque account services; deposit services; stock and bond underwriting services (creating an online virtual trading environment for stock trading); financial consultancy services; share and bonds brokerage services; fiduciary services for corporate and individuals; [outside the scope] financial sponsorship of sports events; financial research of in the field of financial sponsorship in relation to of football competitions; providing online information relating to financial, banking, insurance and investment services; Internet banking services; bill payment services provided via wireless electronic telecommunications apparatus and devices MOBILE PHONES; credit card, debit card and electronic check transaction processing services; trading services of financial products, investment deposit, financial guarantees (surety); currency and foreign exchange services, letters of credit and documentary credit, commission and trading services, asset management, hard currency; and security instruments [outside the scope] issuing stored value cards which may include personal user identity data for use as electronic sports tickets,” in International Class 36;

 

“(Based on Section 44e) Service station services, namely, cleaning, lubrication, maintenance and repair of vehicles; anti-rust treatment for vehicles, engines and machinery; [outside the scope] aircraft and trailers washing, polishing, greasing, lubrication, maintenance and repair of aircraft and trailers; motor vehicle washing; maintenance and repair of vehicle tyres; [outside the scope] vehicle tyre re-fitting and repair; installation and maintenance of wireless electronic communication networks in the nature of computer (hardware); installation of computer hardware installation RELATED TO SPORT and repair; [outside the scope] building construction and building restoration [outside the scope] services; installation of recreation buildings, commercial buildings and office buildings, luxury yachts, and boats; [outside the scope] construction, installation and repair of sports fields made of stadiums with artificial or natural grass; construction, [outside the scope] power plant construction and maintenance [outside the scope]; pipeline construction and maintenance; exploitation of oil and gas fields in the nature of oil and gas drilling; installation and assembling [outside the scope and also misclassified] of structures for the production of crude oil; installation of oil production apparatus; installation of solar power systems; installation of wind power systems; installation of hydropower systems; mining extraction services,” in International Class 37;

 

“(Based on Section 44e) Telecommunication services, namely, personal communication services, ISDN services, telecommunications access services, data transmission and reception services via telecommunication means, telecommunications gateway services, radio communications; communications by telephone and mobile telephones; electronic communications services by telephone; communication by radio; communications by facsimile; paging by radio; communications, namely by teleconferencing services; television broadcasting; radio broadcasting; press and news INFORMATION agency services, namely, the transmission of news items to news reporting organizations; leasing of telephone sets, facsimile and other telecommunication equipment; broadcasting of a commercial website on the Internet or on wireless electronic communication device, namely, the transmission of news items to news reporting organizations; radio and television programming and broadcasting services and radio and television program broadcasting provided via satellite, cable or wireless networks; electronic transmission of messaginges; providing Internet access to a blog, chatroom, bulletin board or discussion service; providing online chat rooms and electronic bulletin boards for the transmission of messages, comments and multimedia content among users for social-networking; providing access to web sites containing maps, information about driving directions and the location of businesses; electronic transmission of messages and images via computer; providing access to home and office shopping and ordering services via computer, a global computer network and/or interactive communications technologies; electronic mail services, namely, electronic transmission of email; providing telecommunications connections to the Internet or databases; providing access to digital music web sites on the Internet or on wireless electronic communication device; providing information on-line from a computer database or from the Internet, related to sports or sporting events; broadcasting of radio and television programs related to sports and sporting events; providing telecommunications connections to a global computer network computer installations (telecommunications services); IT services, namely, providing access to a centralized computer and computer databases (IT service); IT services, namely, providing access to the Internet via a global computer network or via wireless electronic communication device (IT service); streaming of video and audio material from on the Internet; video, audio and television streaming services; providing access to internet search engines; telecommunication, namely, electronic transmission of information, (including web pages), computer programs and any other data,” in International Class 38;

 

“(Based on Section 44e) Educational services, namely, conducting classes, seminars, conferences and workshops in the field of sports and distributing course materials in connection therewith; training services in the field of soccer; provision of training courses in the fields of coaching, refereeing, administration and management of sports and sports medicine; entertainment in the nature of soccer competitions, matches and tournaments; entertainment services provided at or relating to sports events, namely, public viewings of sports events; organisation of community sporting and cultural events and activities; organisation of lotteries and competitions contests; organisation of sporting competitions and events in the field of football; providing sports facilities; fun park services, namely, amusement park and theme park services; health and fitness club services, namely, providing fitness and exercise facilities; rental services for of audio and video equipment; production, presentation, publication and/or rental of films, and sound and video recordings; publication of books; and/or rental of interactive educational and entertainment products, namely, films, books, compact discs, DVDs, mini-discs, CD-ROMs; publication of statistics and other information on sports performances printed matter featuring sports statistics and other information on sports performances; publication of reviews of radio and television reviews coverage of sporting events; production and editing services for radio and television programs; photography services; photography; audio and videotapinge production services; production of animated movies; production of animated television programs; seat booking services for entertainment and sporting events; ticket reservation services for entertainment and sporting events; sports ticket agency services; timing of sports events; audio and video recording of sports events; organisation of beauty contests; interactive entertainment, namely, providing an on-line computer game accessible network-wide by network users; gambling services; providing of raffle services in the nature of a lottery; providing online computer game services; providing online entertainment in the nature of video game tournaments; organization of computer game competitions including online game competitions; providing information relating to entertainment or education, provided on-line from a computer database or the Internet or on wireless electronic communication device; electronic games services provided by means of the Internet or on wireless electronic communication device (entertainment); publication of books; publication of electronic books and journals on-line; entertainment services in the form of providing chat rooms on the Internet or on via wireless electronic communication device; entertainment services in the form of cinema performances theaters; translation services; interpreter services; provision of entertainment infrastructures, namely, providing of sports facilities featuring VIP lounges inside and outside the stadiums both on and off site sports facilities for entertainment purposes; hospitality services, namely, customers reception services, including provision of tickets for sporting or entertainment events planning and conducting of parties for entertainment purposes and reservation of seat tickets for sporting or entertainment events in connection therewith; providing online information in the fields of sports or sports events from a computer database or the Internet; providing information on-line from a computer database or from the Internet, related to sports or sporting events,” in International Class 41; and

 

“(Based on Section 1b) Restaurant services, fast food restaurant services; retail restaurant services at a counter or window, at the table and on-site or off-site for home delivery; snack bar services; hospitality services, namely, providing temporary accommodation for and providing food and drink and accommodation both on and off sports sites facilities and at entertainment events in the fields of sports; temporary accommodation services, namely, providing temporary accommodation, for and providing food or drink, both on and off site at sports facilities; take-out restaurant services in supermarkets, convenience stores and service stations; catering services; hotel services; resort lodging and boarding house services, reservation of hotels and temporary lodgings; rental of meeting rooms, namely, VIP lounges and lodges both on and off site at stadiums,” in International Class 43.

 

Applicant’s goods and 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 or services or add goods 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 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 or services will further limit scope, and once goods or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.

 

Multi-Class Application Requirements

 

The application identifies goods and services in more than one international class. Therefore, applicant must satisfy all of the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)        List the goods and 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 16 classes. However, applicant submitted a fee sufficient for only 12 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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Advisory Regarding Claimed Prior Registrations

 

Applicant’s claim of ownership of U.S. Registration No. 4307167 will not be printed on any registration which may issue from this application because office records show that the claimed registration is cancelled. Only claims of ownership of active registrations are printed. See 37 C.F.R. §2.36; TMEP §812.

 

TEAS RF Application Requirements

 

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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this non-final office action.

 

• 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 law office referenced in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 05, 2019 for

U.S. Trademark Application Serial No. 88661263

 

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. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@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 05, 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.”