UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

PRIORITY ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 2/14/2019

 

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2018), and has determined the following, which was discussed in communication with Suzanne K. Ketler, Attorney at Law, on  February 13, 2019.

NO CONFLICTING MARKS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (October 2018).

PROCEDURAL REQUIREMENTS

AMEND & RECLASSIFY LISTED GOODS & SERVICES

As discussed, Applicant is advised that certain of the listed goods and services are unacceptable as indefinite, overly broad and misclassified.  37 C.F.R. § 2.32(a)(6); TMEP §§ 1401.03, 1402.11. 

With respect to the listings in International Class 29, these are overly broad.  The entry “live animals” are goods in International Class 31, and must be reclassified.  See attached listings from the Trademark Acceptable Identifications of Goods and Services Manual.

With respect to the first entry in International Class 41, Applicant must specify the nature of the recreational horseback riding, hunting and fishing services, such as “providing horseback riding, hunting, and fishing instruction” or “providing facilities and grounds for horseback riding, hunting, and fishing.”  See attached listings from the Trademark Acceptable Identifications of Goods and Services Manual.  The identified “guided tours” is indefinite and overly broad.  Providing transport for guided tours would be in International Class 39, while conducting guided tours as educational visits would be in International Class 41.  Applicant must amend the entry to include the nature of the guided tour service, e.g., conducting or arranging, as well as including the subject venue or facility.  Similarly, the identified trail tours is indefinite and overly broad.  Providing transport for trail tours would be in International Class 39, while conducting guided trail tours would be in International Class 41.

With respect to the first entry in International Class 43, Applicant should amend the wording “in the nature of” to “providing temporary lodging services at a horse ranch and hunting lodge,” to improve clarity and understanding of the exact services.

As the above examples demonstrate, the listings are overly broad.  Depending on the amended listing or listings, the amended goods and services may be in more than the listed international classes.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing classes, Applicant must amend the application by classifying the goods and services in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit goods and services to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of goods and services are suggestions only.  New wording is capitalized and bold.  Reclassified and relocated wording is in bold lettering. 

Applicant may adopt the following framework to amend and classify the goods and services, if appropriate:

International Class 29:

Meat.

International Class 31 (NOT AN ACTIVE “PAID-FOR” CLASS):

Live animals.

International Class 39 (NOT AN ACTIVE “PAID-FOR” CLASS):

PROVIDING TRANSPORT FOR guided tours; PROVIDING TRANSPORT FOR trail tours.

International Class 41:

Recreational services in the nature of PROVIDING FACILITIES AND GROUNDS FOR horseback riding, hunting, and fishing; horseback riding, hunting, and fishing guide services; CONDUCTING guided tours OF HISTORICAL SITES; CONDUCTING GUIDED trail tours.

International Class 43:

Providing temporary lodging services AT a horse ranch and hunting lodge; hotel services; restaurant and bar services; catering services.

TMEP §§ 1402.01, 1402.03.

Please note that while the identification of the above-identified goods and services may be amended to clarify or limit the listed goods and services, adding goods and services or broadening the scope of the listed goods or services is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06-.07.  Therefore, Applicant may not amend any identification to include goods or services that are not within the scope of the goods and services set forth in the present identifications.

For assistance with identifying and classifying the goods and services in this application, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies goods and services that may be classified in more than three international classes; however Applicant paid the fee for only three classes.  Proper classification determines the amount of total fees; a fee for each class is required.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes. 

REQUIREMENTS SHOULD AN ADDITIONAL CLASS BE ADDED

For an application with more than one international class, an applicant must comply with both of the following requirements based on an intention to use the mark in commerce under Section 1(b) of the Trademark Act:

(1)        Applicant must list the goods and services by their international class in consecutive numerical order, starting with the lowest numbered class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and services not covered by the fees already paid (click for USPTO’s current fee schedule). 

 

37 C.F.R. § 2.86; see 37 C.F.R. §§ 2.32(a), 2.34(a)(3); TMEP §§ 810.01, 1403.01, 1403.02(c).

Please see 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.

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.  

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Attorney Advisor

Law Office 111

571/272-5892

judy.helfman@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/14/2019 FOR U.S. APPLICATION SERIAL NO. 88182097

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/14/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.