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:  June 30, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Prior-Filed Application Advisory
• Partial Refusal of Nondistinctive Trade Dress for Services
• Unsigned Application Refusal
• Requirement – Clarify if Two-Dimensional or Three-Dimensional Mark
• Identification and Classification of Services Requirement
• Disclaimer Requirement

 

PRIOR-FILED APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 79227347 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

PARTIAL REFUSAL OF NONDISTINCTIVE TRADE DRESS FOR SERVICES

 

The mark consists of the term “XS” in block letters displayed on a design of a tag. The lower right corner of the tag contains a design of a bird that flies with its wings spread. The identified goods are in Class 39 for “air transport; air transportation for cargo, mail and passengers; courier services; delivery of goods by air; freight transportation by air; travel services, namely, travel guide services; travel agency services, namely, arranging and making reservations and booking for air and inland transportation, and wholesale and retail of tour packages which include air, inland travel and cruises; arranging travel tours, namely, tour guide services, sight seeing services as part of a tour or vacation package; organization, booking and arrangement of excursions, day trips and sightseeing tours; travel information services; providing flight arrival and departure information; airport passenger check-in services; airport baggage check-in services; airplane chartering; airline passenger services in the nature of a frequent flyer program; providing an interactive web site containing information, services and reservation capability, primarily relating to travel, car rental, and freight and cargo forwarding, namely, airline flight schedules, airline flight reservations, airline flight bookings, airline flight seating assignments, airline flight meals, car rental reservations, and arrangement for freight and cargo shipments; air transportation services featuring a frequent flier bonus program; transportation services, namely, providing a specialized priority airline service with reservation services, enhanced airport ticketing processing, priority check-in, gate handling and aircraft boarding services, enhanced seating accommodations, enhanced personal space, computer connections and expanded meal services for passengers; delivery of goods by air and land; providing an on-line computer database in the field of travel information services and travel ticket reservations; air travel services, namely, transportation of passengers by airplane offering privilege services, namely, seat selection based on individual passenger preferences.”

 

This refusal applies to the shape of the tag and the circle on the tag.

 

Registration is refused because the applied-for mark consists of nondistinctive trade dress that would not be perceived as a service mark but only as decoration or ornamentation.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2029-30 (TTAB 2010); In re File, 48 USPQ2d 1363, 1365-67 (TTAB 1998); TMEP §§1202.03, 1301.02(a).

 

When used with services, trade dress typically consists of three-dimensional matter or visual elements that form or otherwise affect the “packaging” of the services, i.e., the image or appearance of the location where, or the means by which, the services are performed.  See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992) (affirming judgment of lower court and accepting its description of trade dress for restaurant services as the “total image” of the restaurant, including the shape and general appearance of the exterior of the restaurant, identifying sign, interior kitchen floor plan, decor, menu, equipment used to serve food, and servers’ uniforms); In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (stating that an abbreviated tuxedo costume consisting of wrist cuffs and a bowtie collar without a shirt constituted trade dress because it was part of the “packaging” for exotic dancing services); In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) (finding blue-themed motif of retail store’s interior constituted trade dress for retail store services where the motif was used in association with the store name, carpeting, neon lighting, display panels for publications, shelving, and employee uniforms), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997).

 

A mark is inherently distinctive if its intrinsic nature serves to identify a particular source.  See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000).  In determining whether or not trade dress is inherently distinctive, the ultimate focus is on whether the trade dress is of such a design that a consumer will immediately rely on it to differentiate the services from those of competing manufacturers or service providers.  See In re Chippendales USA, Inc., 622 F.3d at 1352, 96 USPQ2d at 1684-95.

 

The following factors are considered when determining the inherent distinctiveness of configuration marks for services:

 

(1)        Whether the applied-for mark is a “common” basic shape or design;

 

(2)        Whether the applied-for mark is unique or unusual in the field in which it is used;

 

(3)        Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; and

 

(4)        Whether the applied-for mark is capable of creating a commercial impression distinct from the accompanying words.

 

See In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d at 2027 (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii).  Any one of these factors, by itself, may be determinative as to whether the mark is inherently distinctive.  See In re Chippendales USA, Inc., 622 F.3d at 1355, 96 USPQ2d at 1687; In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d at 2028.

 

In this case, the evidence from a representative sample of third party use shows that the applied-for mark is not inherently distinctive because many third parties use this shape in connection with labels for luggage in the transportation industry of applicant.  The rectangular tag shape with two corners cut off and circle functioning as a hole for a string to attach tags to items is a common shape for tags.  Please see the following representative sample of evidence:

 

-          Airline Gifts, page selling bag tags for airlines. http://airlinegifts.com/product/alaska-airlines-bag-tag-tag-020/

-          New Atlas, article entitled, “Could this be the one bag tag to rule them all?” http://newatlas.com/one-bag-tag-luggage-etag/46800/

-          Quality Logo Products Blog, article entitled, “What Are the Different Types of Luggage Tags?” http://www.qualitylogoproducts.com/blog/what-are-the-different-types-of-luggage-tags/

-          Quality Logo Products Blog, article entitled, “Why Do We Use Luggage Tags?” http://www.qualitylogoproducts.com/blog/why-do-we-use-luggage-tags/

-          Slate, article entitled, “The Beauty of the Airline Baggage Tag.” http://www.slate.com/articles/life/design/2012/10/airline_baggage_tags_how_their_brilliant_design_gets_bags_from_point_a_to_point_b_.html

-          Upgraded Points, article entitled, “The 11 Best Luggage Tags on the Market for Travelers [2021].” http://upgradedpoints.com/travel/best-luggage-tags/

-          Wikipedia, page on “bag tag.” http://en.wikipedia.org/wiki/Bag_tag

 

When used in connection with applicant’s Class 39 transportation services focused on air transportation, consumers are not likely to recognize this shape as designating the source of particular services, but rather, to function as a tag.

 

In response to this refusal, applicant may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant’s use of the same mark on other services, the mark has become distinctive of the services in the intent-to-use application, and that this previously created distinctiveness will transfer to the services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).

 

The following two requirements must be satisfied to claim acquired distinctiveness for a mark in an intent-to-use application:

 

(1)        Applicant must establish that the same mark has acquired distinctiveness as to the other services by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related services, or actual evidence of acquired distinctiveness for the same mark with respect to the other services; and

 

(2)        Applicant must show sufficient relatedness of the services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the services in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the services involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

As an alternative to claiming acquired distinctiveness, applicant may amend the application to the Supplemental Register after timely filing an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§1102.03, 1202.02(b)(ii).  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for an amendment to allege use or 37 C.F.R. §2.88(c) for a statement of use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

Applicant should note the following additional ground for refusal.

 

UNSIGNED APPLICATION REFUSAL

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a). 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

ADVISORY ON WHO CAN SIGN DECLARATIONS

 

A verified statement, which includes statements supported by a signed declaration under 37 C.F.R. §2.20, must be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant.  37 C.F.R. §2.193(e)(1); TMEP §804.04; see 37 C.F.R. §2.33(a).  The following persons are properly authorized:  (1) a person with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant or a general partner of a partnership applicant); (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of applicant; and (3) an attorney who is authorized to represent the applicant and to practice before the USPTO.  37 C.F.R. §2.193(e)(1); TMEP §804.04. 

 

ADVISORY ON WHO CAN SIGN RESPONSES

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney authorized to practice before the USPTO, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

REQUIREMENT – CLARIFY IF TWO-DIMENSIONAL OR THREE-DIMENSIONAL MARK

 

The drawing shows a two-dimensional image; however it is not clear from the record whether applicant is applying for (1) a two-dimensional design mark that is not trade dress; or (2) a three-dimensional mark that is trade dress for product design (i.e., the configuration or shape of the goods themselves), product packaging (i.e., the container in which the goods are sold), or a specific design feature of the product design or packaging.  Thus, applicant must clarify whether the applied-for mark is intended to be a two-dimensional design or a three-dimensional configuration mark.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).

 

If applicant is applying for a two-dimensional design mark, applicant must clarify so for the record, and may amend the description accordingly.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).

 

If applicant is applying for a three-dimensional configuration mark that is trade dress, applicant must amend the description to provide a clear and concise description of the mark that does the following:

 

(1)        Indicates the mark is a three-dimensional configuration of the product design or packaging, or of a specific design feature of the product design or packaging.

 

(2)        Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.

 

(3)        Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.

 

See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii). 

 

With regard to part (3) of the three-dimensional configuration mark requirements, additional non-distinctive matter would need stippling, namely, the outer border of the tag and the circle on the tag would be required to be drawn in dotted lines in an amended drawing.  Please see the attached representative sample of third party use and discussion in the nondistinctive trade dress refusal above showing this shape of label is commonly used in applicant’s transportation industry, to include the same label shape and circle functioning as a hole for a string to attach tags to items.  Nondistinctive elements of a trade dress that are incapable of functioning as a service mark are generally unregistrable and required to be shown in broken or dotted lines on the drawing.  See 15 U.S.C. §§1051-1052, 1127; 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); TMEP §1202.02(c)(i)(B).  Accordingly, the mark description suggestions herein are applicable to a corrected drawing to include this additional stippling. 

 

The following is suggested (the examining attorney’s suggested changes and additions are in bold font and suggested items to remove have a line through them):

 

If two-dimensional: The mark consists of the term “XS” in block letters displayed on a design of a vertically oriented rectangular tag with the top two corners cut off containing a dotted line inner border and a single line circle near the top center of the tag. The lower right corner of the tag contains a design of a bird that flies with its wings spread.

 

If three-dimensional: The mark consists of a three-dimensional configuration comprising the term “XS” in block letters. To the displayed on a design of a tag.  The lower right corner of the wording is tag contains a design of a bird that flies with its wings spread. The broken lines depicting a vertically oriented rectangular tag with the top two corners cut off and a hole near the top center of the tag indicate placement of the mark on the trade dress and are not part of the mark.  

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES REQUIREMENT

 

Several items in the wording in the identification of services are indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  In particular, several of the items should be clarified such that it is clear they are services for others and not just for the benefit of applicant.  For example, in Class 39, the wording “arrangement of excursions” should clarify that the travel aspects of the excursions are being arranged to be within the scope of Class 39.

 

The wording “arranging travel tours” in the identification of services for International Class 39 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 transport services in Class 39 and guided tour-type services in Class 41.  Accordingly, each item in the list of “arranging travel tours, namely, tour guide services, sight seeing services as part of a tour or vacation package” should be classified according to the nature of the services.  For example, the “tour guide services” in Class 39 could encompass travel guide services or travel arrangement in Class 39 and conducting guided tours of specific places in Class 41.

 

Applicant has classified the following services in International Class 39: “wholesale and retail of tour packages which include air, inland travel and cruises.”  However, the proper classification for each item is in Class 35.  Applicant has classified the following services in International Class 39: “providing an interactive web site containing … services and reservation capability …” which needs to be classified by the nature of the technology service.  Providing technology that enables users to perform an activity is a technology service in Class 42.  These services are not classified based on the subject matter of the activity performed.

 

If applicant adopts the suggested amendment of the services, then applicant may amend the classification to any of the following International Classes: 35, 39, 41, and/or 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  See a discussion of multiple-class application requirements, below.

 

In addition to being misclassified, the activities identified as “retail services” are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring [the specified goods],” “retail distributorships in the field of [the specified goods],” and “retail outlets featuring [the specified goods].”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

In addition to being misclassified, the identification for “wholesale services” is indefinite and must be clarified because it could include a wide array of services related to wholesaling – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  Applicant must amend the identification to specify the nature of the wholesale activity that applicant provides (e.g., wholesale distributorships, wholesale services by direct solicitation by sales agents, or wholesale store services).  If the services are in the nature of wholesale stores, direct solicitation, or distributorships, the identification should also indicate the field or type of goods offered through the wholesale services, e.g., “wholesale distributorships featuring [the specified fields],” “wholesale services by direct solicitation by sales agents in the field of [the specified fields],” and “wholesale store services featuring [the specified fields].”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

Applicant has included the term “or” in the identification of services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services.  An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Particular wording in the U.S. application’s identification of services is not acceptable because it exceeds the scope of the services in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only services that are within the scope of the services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). 

 

In this case, the U.S. application identifies the particular services as follows that are outside the scope of the foreign registration:    

 

Class 39: … courier services; delivery of goods by air; … travel services, namely, travel guide services; … wholesale and retail of tour packages which include air, inland travel and cruises; arranging travel tours, namely, tour guide services, sight seeing services as part of a tour or vacation package; … travel information services; providing flight arrival and departure information; airport passenger check-in services; airport baggage check-in services; airplane chartering; airline passenger services in the nature of a frequent flyer program; providing an interactive web site containing information, services and reservation capability, primarily relating to travel, car rental, and freight and cargo forwarding, namely, airline flight schedules, airline flight reservations, airline flight bookings, airline flight seating assignments, airline flight meals, car rental reservations, and arrangement for freight and cargo shipments; … transportation services, namely, providing a specialized priority airline service with reservation services, enhanced airport ticketing processing, priority check-in, gate handling and aircraft boarding services, enhanced seating accommodations, enhanced personal space, computer connections and expanded meal services for passengers; delivery of goods by air and land; providing an on-line computer database in the field of travel information services and travel ticket reservations; air travel services, namely, transportation of passengers by airplane offering privilege services, namely, seat selection based on individual passenger preferences

 

However, the foreign registration identifies the following services:

 

Class 39: Air transport; loading, packing and storage of goods; travel organization and tourist plans.

 

These services in the U.S. application exceed the scope of services in the foreign registration because they are not encompassed by the services in the registration, and in some cases, the wording is broader than the wording in the foreign registration.   

 

Therefore, applicant may respond by satisfying one of the following:

 

(1)        Amending the identification of services in the U.S. application to correspond to the services in the foreign registration, ensuring that all services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)        Deleting the Section 44 basis for the services beyond the scope of the foreign registration and relying solely on the Section 1 basis for the remaining services.   

 

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, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):

 

Class 35: wholesale and retail {please specify the nature of the wholesale and retail services, e.g., store services featuring} tour packages which include air, inland travel and cruises

 

Class 39: Air transport; air transportation for cargo, mail and passengers; courier services; delivery of goods by air; freight transportation by air; travel services, namely, travel guide services; travel agency services, namely, arranging and making reservations and booking for air and inland transportation, and wholesale and retail of tour packages which include air, inland travel and cruises; arranging travel tours, namely, tour guide services in the nature of {please specify the Class 39 nature of the services, e.g., travel guide services}, {please specify the Class 39 nature of the services, e.g., travel arrangement of} sight-seeing services as part of a tour or and vacation package; organization, booking and arrangement of {please specify the Class 39 nature of the services, e.g., travel} in the nature of excursions, day trips and sightseeing tours; travel information services; providing flight arrival and departure information; airport passenger check-in services; airport baggage check-in services; airplane chartering; airline passenger services in the nature of a frequent flyer program; providing an interactive web site containing information, services and reservation capability, primarily relating to travel, car rental, and freight and cargo forwarding, namely, airline flight schedules, airline flight reservations, airline flight bookings, airline flight seating assignments, airline flight meals, car rental reservations, and arrangement for freight and cargo shipments; air transportation services featuring a frequent flier bonus program; transportation services, namely, providing a specialized priority airline service with reservation services, enhanced airport ticketing processing, priority check-in, gate handling and aircraft boarding services, enhanced seating accommodations, enhanced personal space, computer connections and expanded meal services for passengers; delivery of goods by air and land; providing an on-line computer database in the field of travel information services and travel ticket reservations; air travel services, namely, transportation of passengers by airplane offering privilege services, namely, seat selection based on individual passenger preferences

 

Class 41: Arranging travel tours, namely, tour guide services in the nature of {please specify the Class 41 nature of the services, e.g., conducting guided tours of {indicate facility, e.g., a museum, a historical site, a winery}}, sight-seeing services in the nature of {please specify the Class 41 nature of the services, e.g., conducting guided tours of {indicate facility, e.g., a museum, a historical site, a winery}} as part of a tour and vacation package

 

Class 42: Providing an interactive web site containing services and reservation capability primarily relating to travel, car rental, and freight and cargo forwarding, namely, providing an interactive web site that features technology that allows users to access airline flight schedules, book airline flight reservations, book airline flight bookings, book airline flight seating assignments, book airline flight meals, book car rental reservations, and schedule arrangement for freight and cargo shipments

 

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.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

ADVISORY ON MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The fee for adding classes to a TEAS Standard application is $350 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.

 

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 Sections 1(b) and 44:

 

(1)        List the 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 4 classes; however, applicant submitted fees 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).

 

DISCLAIMER REQUIREMENT

 

Applicant must disclaim the abbreviation “XS” because it is commonly used in business to impart information about the quantitative size of the services provided and would not be perceived as distinguishing the services and identifying their source; thus the wording does not function as a mark.  See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).

 

Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

 

The attached evidence from or about Uber, Lyft, FedEx, and USPS companies shows that this type of abbreviation is commonly used by businesses as an indicator of size.  For example, Uber and Lyft rideshare transport services have different service levels, with XL levels offering more comprehensive services than regular fare rates.  The U.S. Postal Service offers various flat rate delivery services for boxes from size small to large.  FedEx shipping services offer various flat rate delivery services for boxes, envelopes, paks and tubes from sizes small to extra large. 

 

In particular, the attached dictionary evidence from Merriam-Webster shows “XS” is an abbreviation for “extra small.”  The attached dictionary evidence from Merriam-Webster shows “extra” means “beyond the usual size, extent, or degree // extra large.”  And, the attached dictionary evidence from The American Heritage Dictionary shows “small” means “[b]eing below average in size” or “[b]eing below average in quantity or extent.”  This shows “extra small” means beyond the usual size, extent, or degree of being below average in size. 

 

Because consumers are accustomed to seeing this term commonly used by many businesses to impart information to consumers to quantify the size of the services, they will perceive this abbreviation only as informational matter rather than as a service mark that distinguishes applicant’s services from those of others and identifies the source of applicant’s services.

 

This finding is supported by applicant’s use and webpages and/or articles about applicant.  This includes the following sample attachments:

 

-          Applicant’s page on “Check your fare types.”  This discusses different fares as follows: XS, S, M, L, XL, and XXL.  The XS fare has the fewest benefits, and each fare type has more benefits up until the XXL fare type, with the most benefits. http://www.avianca.com/us/en/experience/purchasing/fares/fare-options/

-          Applicant’s page on “How do you collect and redeem your LifeMiles?”  This page refers to each fare type as a different size, from “XS Size” to “XXL Size.”  http://www.avianca.com/us/en/experience/lifemiles-program/how-to-accumulate-redeem-lifemiles/

-          Applicant’s page to “Buy your ticket.”  This sample page to buy a ticket shows the “Fare type” is “S.”   http://www.avianca.com/us/en/search-and-book/deals-and-offers/details-of-deals/?ID=US20210628minimasus28IADLPB1&ORG=IAD&DEST=LPB

-          Applicant’s page to search for flights.  Stating, “Fly with our Tailor-made flights.”  Including the “S Size,” “M Size,” and “L Size.”  http://www.avianca.com/co/en/search-and-book/deals-and-offers/test-campaign/

-          Aeroficionados, page on “Rates tailored to you Avianca,” discussing .  This page is translated into English by Google Translate.  Discussing rate schemes by the Avianca company related to different luggage sizes.  “The first thing we should know is that now the rates are classified in sizes being as follows: XS, S, M, L, XL, XXL. What does each of these rates contain? Here are the main features: …”  http://aeroaficionados.com/tarifas-a-tu-medida-avianca/

-          Airline Geeks, article on “Avianca Announces New Fare Structure as Part of Ongoing Efforts to Secure Profitability.”  This article discusses how applicant has new fare groups.  “South American carrier Avianca announced a new fare structure that seeks to generate additional revenue through the sale of ancillary products. The new structure is divided into five fare groups labeled as S, M, L, XL and XXL and begins charging for seat selection along with hold luggage in the lower fare groups.”    http://airlinegeeks.com/2020/02/12/avianca-announces-new-fare-structure-as-part-of-ongoing-efforts-to-secure-profitability/

-          Flight Chic, article entitled, “Avianca Introduces ‘Tailor-Made’ Fares In North America.”  “The airline has designed a structure with six fare bundles, four for economy class and two for Business class. Customers can identify them by fares bundles in sizes XS, S, M, L, XL and XXL.”  “This fare structure allows the customization of the trip through five fare bundles plus one seasonal fare that are adaptable to the clients’ needs. It also allows them to control which attributes, they want to purchase based on their trip conditions. The airline has designed a structure with six fare bundles, four for economy class and two for Business class. Customers can identify them by fares bundles in sizes XS, S, M, L, XL and XXL.”  “…says Silvia Mosquera, Chief Commercial Officer of Avianca. ‘The intention to change the fare model is to give the client an additional value that does not have today. We are generating greater offers and aligning with the sales and customer service trends of several airlines in the world.’”  http://flightchic.com/2020/03/07/avianca-introduces-tailor-made-fares-in-north-america/

 

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

 

No claim is made to the exclusive right to use “XS” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

ADVISORY ON OPTION TO DELETE BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  However, if this is the case, please note that any items in the identification that are outside the scope of the foreign registration must be removed.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the services based on Section 1(b).

 

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 each refusal and/or requirement 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.    

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 June 30, 2021 for

U.S. Trademark Application Serial No. 90434438

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 June 30, 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.”