United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1590127

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment).  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
• IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT
• U.S. COUNSEL REQUIRED

 

SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

 

Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods and/or services.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).

 

Applicant’s mark is LIVERPOOL FC for all of the goods and services reflected in the Identification of Goods and Services Requires Amendment section below. (the section below includes suggested amendments).

 

A mark is primarily geographically descriptive when the following is demonstrated:

 

(1)       The primary significance of the mark to the purchasing public is a generally known location;

 

(2)       The goods or services originate in the place identified in the mark; and

 

(3)       The purchasing public would be likely to believe that the goods or services originate in the geographic place identified in the mark; that is, to make a goods-place or services-place association.

 

TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015). 

 

The attached evidence from columbiagazarteer.com shows that the significance of the mark to the purchasing public is that of a generally known city of England. Here, applicant’s address in Livepool, UK.

 

The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014) (holding HOLLYWOOD LAWYERS ONLINE primarily geographically descriptive of attorney referrals, online business information, and an online business directory); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1920 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive of cheese).

 

Here, the first two factors of the test have been shown. A goods-place or services-place association may be presumed where (1) the location in the mark is generally known to the purchasing public, (2) the term’s geographical significance is its primary significance, and (3) the goods and/or services do, in fact, originate from the named location in the mark.  TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988) (finding a services-place association was presumed between applicant’s restaurant services and California because the services originated in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 850 (TTAB 1982) (finding a goods-place association was presumed between applicant’s t-shirts and Denver because the goods had their geographical origin in Denver); see also In re Nantucket, Inc., 677 F.2d 95, 102, 213 USPQ 889, 895 (C.C.P.A. 1982) (Nies, J., concurring) (“[W]e must start with the concept that a geographic name of a place of business is a descriptive term when used on the goods of that business.  There is a public goods/place association, in effect, presumed.” (internal footnote removed)).

 

For these reasons, the applied-for mark is refused under Section 2(e)(2) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Response Option – Section 2(f)

 

Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) if applicant has used the mark for a significant period of time in commerce that may lawfully be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127; In re Etablissments Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); TMEP §1212.08.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).  Additionally, this use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested.  15 U.S.C. §1052(f); TMEP §1212.05.

 

To amend the application to assert Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), provide information regarding the length of use of the mark in commerce and/or dates of use, and include the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08.  Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT

 

Applicant must clarify most of the entries in the identification of goods and/or services because they are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

In Class 3, applicant must include that several of the entries are either non-medicated or are cosmetics in nature.

 

In Class 9 some of the recording media must specify the field and subject matter contained on the media and/or that the media is blank. Further, for each of the software/computer programs/mobile applications entries in International Class 9 are indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). 

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

Most of class 16 entries must specify the subject matter of the paper goods or periodicals. Further, some of the goods must specify that they are printed and not digital, for instance.

 

In Class 18, applicant must specify the particular nature of the identified bags.

 

The word “clothing” in Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

In Class 28, the applicant must specify the particular nature of the identified “balls”. Further, more specificity on the particular types of sporting equipment is required.

 

In Class 35, applicant must specify some of the entries are in fact services and not advertising materials, for instance. Further, the activities identified as “retail services” in International Class 35 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 <insert goods featured>,” “retail distributorships in the field of <insert goods featured>,” and “retail outlets featuring <insert goods featured>.”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

In Class 41, the identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

In Class 43, applicant must further clarify the nature of the food, drink, and temporary accommodation services.

 

Finally, each class contains an overly broad catch-all phrase such as “parts and fittings for the aforesaid goods” and “information, advisory and consultancy services relating to the aforesaid”. In addition to being overly broad, in several instances these entries are not logical. Applicant is encouraged to clarify particular parts or consulting services or remove these entries from the identifications. The word “consulting,” “consultancy,” or “consultation” services must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e).  This wording is indefinite because it does not specify the subject matter of the services.  Further, this wording could identify services in more than one international class.  

 

Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e). 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 3: Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; non-medicated soaps; perfumery, essential oils; non-medicated hair lotions; non-medicated dentifrices (duplicate) ; adhesives for cosmetic purposes; after-shave lotions; after-sun lotions for cosmetic purposes; antiperspirants [toiletries]; non-medicated toiletries, namely, cosmetics; aromatherapy oils being essential oils for use in aromatherapy; bath and shower gels; bath salts; beauty balm creams; beauty care preparations in the nature of cosmetics; body lotions; body sprays; cosmetic creams; cosmetic nail care preparations; cosmetics; dry shampoos; eau de toilette and eau de cologne; essential oils; scented body lotions, creams and butters; exfoliating scrubs for the body; hair care lotions; hair shampoos and conditioners; hair sprays and hair gels; hand skin cleansers; hand lotions for cosmetic purposes; non-medicated, non-veterinary grooming preparations in the nature of pet shampoos; body sprays for cosmetic purposes; shaving preparations; shoe polish; sunscreen preparations; talcum powder for cosmetic purposes; parts and fittings for the aforesaid goods

 

International Class 9: Apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, recording discs; blank compact discs, blank recordable DVDs and other digital recording media, namely, blank usb flash drives; downloadable animated cartoon strips; audio and video receivers; baby monitors; bags adapted for laptops; bathroom scales; batteries, electric; binoculars; camcorders; cameras (photography); cases for photographic apparatus and equipment; cases for smartphones; chargers for electric batteries; chargers for electronic cigarettes; compact disc players; computer programs, recorded, for <indicate function and field of use>; downloadable computer software programs for <indicate function and field of use>; downloadable computer game software; downloadable computer software applications for <indicate function and field of use>; computer hardware; downloadable computer software for <indicate function and field of use>; contact lenses; cordless telephones; covers for smartphones; covers for personal digital assistants; covers for tablet computers; decorative magnets; digital photo frames; digital signs; personal digital assistants; downloadable ring tones for mobile phones; downloadable music and image files containing {indicate content or subject matter}; downloadable graphics for mobile phones; DVD players; egg timers; electronic book readers; encoded magnetic key cards; encoded key cards; eyewear; goggles for sports; hands-free kit for telephones; headphones; holograms apparatus; joysticks for use with computers, other than for video games; laptop computers; magnets; magnifying glasses; megaphones; mobile telephones; cell phones; smartphones; modems; mouse in the nature of computer peripheral devices; mouse pads; phonograph records featuring music; protective helmets for sports; radios; record players; exposed cinematographic films; sound recording strips, namely, <indicate common commercial name for goods>; downloadable podcasts in the field of soccer;       Computer screen saver software, downloadable; downloadable software applications and software for mobile telephones and other forms of communication for <indicate function and field of use>; downloadable video game software applications; downloadable computer game software for video game machines; downloadable video game software; protective clothing and helmets for sport and leisure to prevent injury; sports whistles; electronic sports training simulators;  downloadable computer education software for uploading educational content; tape rulers; satellite navigation apparatus, namely, gps navigation devices; selfie sticks; signs, luminous; sleeves for laptops; smartglasses; smartphones;(duplicate) smartwatches; spectacles; spectacle cases, chains and frames for spectacles; sunglasses; tablet computers; telephone apparatus; television apparatus for projection purposes; wearable computers in the nature of smartwatches; parts and fittings for all the aforesaid goods

 

 

International Class 16: Paper and cardboard; printed matter in the nature of printed books in the field of soccer; bookbinding material; printed photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials for artists, namely, colored pencils; paintbrushes; paper instructional and teaching materials in the field of sports; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks; adhesive tape for stationery or household purposes; adhesive bands for stationery or household purposes; scrapbook albums and scrapbooks; printed announcement cards; banners of paper; bibs of paper; printed booklets in the field of sports; bookmarkers; printed books in the field of sports; boxes of paper or cardboard; bunting of paper; printed calendars; printed catalogues in the field of sports; coasters of paper; printed comic books; compasses for drawing; document files; drawing pads; drawing materials, namely, paper; envelopes; face towels of paper; flags of paper; printed informational flyers about sporting events; fountain pens; graphic prints; graphic reproductions in the nature of prints; printed greeting cards; handkerchiefs of paper; printed general feature magazines; Printed computer program manuals for sporting event streaming software; mats being paper coasters for beer glasses; modelling clay; money clips; printed newsletters in the field of sports; printed newspapers; stationery paper writing pads; printed pamphlets in the field of sports; paperweights; passport holders; pens; pencils; printed periodicals in the nature of magazines in the field of sports; pictures in the nature of printed photographs; place mats of paper; printed portraits in the nature of printed photographs; postage stamps; printed postcards; printed posters; printed publications in the nature of magazines in the field of sports; printed coupons; rubber erasers; stamp pads; stencils; stickers; table linen of paper; printed tickets; towels of paper; transfers in the nature of decals; writing instruments; printed educational books in the field of sports; scrapbook albums; scrapbooks; sticker albums; stamp albums; printed children's books; printed children's activity books; printed commemorative books in the field of sports; parts and fittings for all the aforesaid goods

 

International Class 18: Articles made of leather or of imitation leather, namely, backpacks; travelling trunks and travelling bags; rucksacks; backpacks; athletic bags; beach bags; leather shoulder belts; briefcases; business card cases; carrying cases; garment cases in the nature of bags for travel; handbags; holdalls; key cases; key holders being key cases; purses; school bags; paper shopping bags; sports bags; suitcases; wallets; umbrellas, parasols and walking sticks; collars, leashes and clothing for animals; covers for animals; parts and fittings for all the aforesaid goods

 

International Class 25: Clothing, namely, footwear, headgear in the nature of baseball hats; sports clothing, namely, sports footwear; sports headgear in the nature of baseball hats; outerwear in the nature of jackets; swimwear; socks; underwear; football shirts; football boots and studs for football boots; football shorts; football socks; boots; shoes; caps being hats; beanie hats; baseball caps; garments in the nature of ponchos for protecting clothing; football jerseys; shorts; gloves; training clothes kit comprised of shorts and shirts; gloves;(duplicate) coats; jackets; t-shirts; sweaters; tracksuits; pants; leggings; sleepwear; pyjamas; dressing gowns; trousers; jeans; shorts; replica football kits comprised of shorts and shirts; clothing belts; parts and fittings for all the aforesaid goods

 

International Class 28: Games, toys and playthings, namely, soccer balls; video game apparatus in the nature of video game machines; gymnastic apparatus and sporting articles, namely, soccer balls; decorations for Christmas trees; arcade video game machines; balls for games; board games; plush toys; football nets; footballs; balls for games, namely, soccer balls; pumps specially adapted for use with balls for games, namely, for footballs; football training cones and sports articles, namely, soccer balls; football training sports articles, namely, spoking goods for speed training in the nature of cones, speed ladders, and hurdles; bags specially adapted for football articles and implements; corner flags for sports fields; gloves for games, namely, goalkeepers’ gloves; tables for indoor table football; miniature replica football kits, namely, action figures; shin pads for athletic use; football gloves, namely, goalkeepers’ gloves; teddy bears; parts and fittings for all the aforesaid goods

 

International Class 35: Advertising services; business management consultancy services; business administration services; providing office functions; demonstration of goods; direct mail advertising services; distribution of samples; import-export agency services; marketing services; organisation of exhibitions for commercial or advertising purposes; organisation of fashion shows for promotional purposes; organisation of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes, namely, providing television home shopping services in the field of general consumer merchandise; price comparison services; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; organisation, operation and supervision in the nature  of operation of loyalty schemes and incentive schemes; retail store services and online retail store services connected with the sale featuring non-medicated cosmetics and toiletry preparations, non-medicated dentifrices, soaps, perfumery, essential oils, non-medicated hair lotions, non-medicated dentifrices, adhesives for cosmetic purposes, after-shave lotions, after-sun lotions for cosmetic purposes, antiperspirants [toiletries], non-medicated toiletries, aromatherapy oils, bath and shower gels, bath salts, beauty balm creams, beauty care preparations, body lotions, body sprays, cosmetic creams, cosmetic nail care preparations, cosmetics, dry shampoos, eau de toilette and eau de cologne, essential oils, scented body lotions, creams and butters, exfoliating scrubs for the body, hair care lotions, hair shampoos and conditioners, hair sprays and hair gels, hand cleansers, hand lotions for cosmetic purposes, non-veterinary grooming preparations], sprays, shaving preparations, shoe polish, sunscreen preparations, talcum powder for cosmetic purposes; retail store services and online retail store services connected with the sale of featuring apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, animated cartoons, audio and video receivers, baby monitors, bags adapted for laptops, bathroom scales, batteries, electric, binoculars, camcorders, cameras (photography), cases for photographic apparatus and equipment, cases for smartphones, chargers for electric batteries, chargers for electronic cigarettes, compact disc players, computer programs, recorded, downloadable computer software programs, computer game software downloadable computer software applications, computer hardware, computer software, contact lenses, cordless telephones, covers for smartphones, covers for personal digital assistants, covers for tablet computers, decorative magnets, digital photo frames, digital signs, personal digital assistants, downloadable ring tones for mobile phones, downloadable music and image files, downloadable graphics for mobile phones, DVD players, egg timers, electronic book readers, encoded magnetic cards, encoded key cards, eyewear, goggles for sports, hands-free kit for telephones, headphones, holograms, joysticks for use with computers, other than for video games, laptop computers, magnets, magnifying glasses, megaphones, mobile telephones, cell phones, smartphones, modems, mouse in the nature of computer peripherals, mouse pads, phonograph records, protective helmets for sports, radios, record players, cinematographic films, film strips, podcasts, screen savers, applications and software for mobile telephones and other forms of communication, video games, games for video game machines, video game software, protective clothing and helmets for sport and leisure to prevent injury, sports whistles, sports training simulators, education software, rulers, satellite navigation apparatus, selfie sticks, signs , luminous, sleeves for laptops, smartglasses, smartphones, smartwatches, spectacles, spectacle cases, chains and frames, sunglasses, tablet computers, telephone apparatus, television apparatus, wearable computers; retail services and online retail services connected with the sale of paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, except furniture, adhesives for stationery or household purposes, drawing materials for artists, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printers' type, printing blocks: adhesive tape for stationery or household purposes, adhesives for stationery or household purposes, albums/scrapbooks, announcement cards, banners of paper, bibs of paper, booklets, bookmarkers, books, boxes of paper or cardboard, bunting of paper, calendars, catalogues, coasters of paper, comic books, compasses for drawing, document files, drawing pads, drawing materials, envelopes, face towels of paper, flags of paper, flyers, fountain pens, graphic prints, graphic reproductions, greeting cards, handkerchiefs of paper, magazines, manuals, mats for beer glasses, modelling clay, money clips, newsletters, newspapers, paper pads as stationery, pamphlets, paperweights, passport holders, pens, pencils, periodicals, pictures, place mats of paper, portraits, postage stamps, postcards, posters, printed publication, printed coupons, rubber erasers, stamp pads, stencils, stickers, table linen of paper, tickets, towels of paper, transfers in the nature of decals, writing instruments, educational books, albums, scrapbooks, sticker albums, stamp albums, children's books, children's activity books, commemorative books; retail services and online retail services connected with the sale of articles made of leather or of imitation leather, trunks and travelling bags, rucksacks, backpacks, bags, beach bags, belts, briefcases, card cases, cases, garment cases for travel, handbags, holdalls, key cases, keyholders, purses, school bags, shopping bags, sports bags, suitcases, wallets, umbrellas, parasols and walking sticks, collars, leashes and clothing for animals, covers for animals, parts and fittings for all the aforesaid goods; retail store services and online retail store services connected with the sale of clothing, footwear, headgear, sports clothing, sports footwear, sports headgear, outerwear, swimwear, socks, underwear, football shirts, football boots and studs for football boots, football shorts, football socks, boots, shoes, caps, hats, beanie hats, baseball caps, garments for protecting clothing, football jerseys, shorts, gloves, training kit and shirts, gloves, coats, jackets, t-shirts, sweaters, tracksuits, pants, leggings, sleepwear, pyjamas, dressing gowns, trousers, jeans, shorts, replica football kits, clothing belts; retail store services and online retail store services connected with the sale of games, toys and playthings, video game apparatus, gymnastic and sporting articles, decorations for Christmas trees, arcade video machines, balls for games, board games, plush toys, football nets, footballs, balls for games, pumps for footballs, football training cones and equipment, football training apparatus, bags specially adapted for football articles and implements, corner flags, gloves for games, tables for indoor football, miniature replica football kits, shin pads, football gloves, teddy bears; booking of sports personalities for events, namely, business management of sports people; information, advisory and consultancy services relating to the aforesaid

 

International Class 41: Education services, namely, providing classes in the fields of sports history; providing of physical fitness training for individuals and groups; entertainment services in the nature of organizing soccer sporting events; sporting and cultural activities,  namely, organizing community sporting and cultural events; amusement park services; on-line ticket agency services for entertainment purposes; arranging for ticket reservations for shows and other entertainment events; ticket reservation and booking services for entertainment, sporting and cultural events; providing sports facilities; providing sports facilities for soccer events; provision of leisure facilities; booking of seats for shows; providing casino facilities; cinema presentations, namely, movie theaters; educational services, namely, conducting soccer games by means of a soccer club; coaching in the field of sports; arranging of concerts; arranging of conferences in he field of sports; disc jockey services; electronic desktop publishing; providing films and music, not downloadable, via on-line on-demand services; conducting fitness classes; gambling services; game services provided on-line from a computer network, namely, providing online non-downloadable game software; games equipment rental; conducting guided moped tours; health club services, namely, providing instruction and equipment in the field of physical exercise; on-line publication of electronic books and journals in the field of sports; providing on-line electronic publications in the nature of magazines in the field of sports, not downloadable; providing on-line music, not downloadable; providing on-line videos, not downloadable; organisation of athletic competitions; organisation of athletic exhibitions for cultural or educational purposes; organisation of sports competitions; arranging and conducting of sports events for charitable purposes; providing online entertainment in the nature of fantasy sports leagues; personal trainer services; photography services; physical education services; practical training, namely, business training; presentation of live show performances; publication of books; production of television shows; sport camp services; providing sports facilities; rental of sports equipment, except vehicles; rental of sports grounds; rental of stadium facilities; theatre productions; sports ticket agency services; advisory, consultancy and information services relating to the aforesaid services

 

International Class 43: Services for providing food and drink, namely, restaurant services; temporary accommodation, namely, hotel services; rental of meeting rooms; provision of facilities for conventions; bar services; bistro services; brasserie services; café services; cafeteria services; canteen services; carvery restaurant services; catering services; coffee shop services; contract food services; delicatessens in the nature of restaurants services; fast-food restaurant services; food and drink catering; food preparation services; ice cream parlours; juice bars; pizza parlours; preparation of food and drink; restaurant services; self-service restaurant services; salad bars in the nature of restaurant services; snack-bar services; take-away food services in the nature of restaurant services; tapas bars; teahouse services; wine bars; reservation services for booking meals; advisory, consultancy and information services relating to the aforesaid services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

Email address required.  Applicant must provide applicant’s email address, which is a requirement for a complete application.  See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020).  Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application.  See Examination Guide 1-20, at III.A. 

 

U.S. COUNSEL REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney for more information. 

 

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant.  37 C.F.R. §2.11(a).  Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. 

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/wna/ccr/car.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

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

/Brendan J. Ketchum/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 125

571-272-5397

brendan.ketchum@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.