UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
| U.S. APPLICATION SERIAL NO. 79176101 MARK: YELLOW MOON TOURS | |
| CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
| APPLICANT: Yellow Moon Tours Limited | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1273134
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The assigned trademark examining attorney has reviewed the referenced application and
has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Disclaimer
The applicant must disclaim the descriptive wording “TOURS” apart from the mark as shown because it merely describes the nature of the applicant’s services. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The applicant’s services feature the arrangement of various types of tours. Thus, the wording “TOURS” immediately describes the nature of the applicant’s services and must be disclaimed apart from the mark as shown.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. A disclaimer does not affect the appearance of the applied-for mark.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “TOURS” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Identification of Services
The identification of services is unacceptable as indefinite. The applicant must clarify the identification of services by specifying what is meant by “booking of seats (travel); coach (motor -) rental; cruises (arranging of -); escorting accompanying of travelers; excursions (arranging of -); fare ticket reservation; fares (provision of information relating to -); fares (provision of information relating to -); information relating to journeys (services for the provision of-); information relating to transport (services for the provision of-); information relating to travel (services for the provision of-); information relating to travel (services for the provision of-); information relating to travelling (services for the provision of-); making travel bookings (services for-); making travel reservations (services for-); passengers (transportation of-); reservation (transport -); reservation (travel -); ; sightseeing tours (arranging of-); sightseeing tours (conducting-); ticket reservation services (travel-); travel tours (arranging of -); travel (arranging of-); travellers (escorting of -); travellers (transport of -)” because this wording is vague and requires greater specificity. Furthermore, the identification of services contains parentheses. Generally, parentheses should not be used in identifications. TMEP §1402.12. The USPTO generally uses brackets to indicate services that have been deleted from registrations. See id. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.
See TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
International Class 39: Accompaniment of travelers; accompanying of travellers; advisory services relating to travel; agency services for arranging cruises; agency services for arranging the transportation of travellers; agency services for arranging the transportation of travellers' luggage; agency services for arranging travel tours; agency services for arranging travels; agents for arranging travel; air passenger transport services; air ticket booking services; air transport of passengers; air transportation services for passengers; air travel services; airline bookings; arrangement of excursions; arrangement of passenger transport; arrangement of sightseeing tours; arrangement of taxi transport; arrangement of travel tours; arrangement of transportation of passengers by cars; arrangement of transportation of passengers by trains; arrangement of transportation of travellers; arrangement of travel; arrangement of travel to and from hotels; arrangement of vehicle rental; arranging airline tickets, cruise tickets and train tickets; arranging and conducting of travel tours and sightseeing; arranging escorts for travellers; arranging excursions for tourists; arranging ferry transportation; arranging for the transportation of passengers; arranging of air transport; arranging of air travel; arranging of car hire; arranging of city sight-seeing tours; arranging of coach tours; arranging of coach travel; arranging of cruises; arranging of excursions; arranging of flights; arranging of holiday transport; arranging of passenger transport; arranging of sightseeing tours; arranging of travel tours; arranging of travel tours and cruises; arranging of tours by bus; arranging of tours by coach; arranging of travel; arranging of travel by bus; arranging of travel by coach; arranging of vehicle hire; arranging of vehicle rental; arranging the escorting of travellers; arranging the transportation of passengers; arranging the transportation of passengers by air; arranging the transportation of passengers by sea; arranging travel tours; arranging travel tours and excursions; arranging transport of passengers by air, rail and sea; arranging transport of passengers by rail; arranging transport services by land, sea and air; arranging transportation of passengers; arranging transportation of passengers by road, rail, air and sea; arranging travel and information therefor, all provided on-line from a computer database or the internet; arranging travel tours; arranging vehicle hire; arranging vehicle rental; boat chartering; boat cruises; booking agency services for airline travel; booking agency services for car hire; booking agency services for sightseeing tours; booking agency services for travel; booking agency services relating to travel; booking and reservation services for travel tours; booking of air tickets; booking of hire cars; booking of rail tickets; booking of sea passages; booking of seats for transportation by air; booking of seats for transportation by motor vehicles; booking of seats for transportation by rail; booking of seats for transportation by water; booking of seats for travel; booking of seats for travelß[Applicant’s original description contains parenthesis and the amendment would be identical to the previous description and should be deleted]; booking of tickets for travel; car hire; car hire services; car rental; car rental, garage and parking space rental; car rental services; car transport; car transport services; chauffeur driven car hire services; chauffeur services; coach hire; motor coach rental; computerised information services relating to travel; computerised information services relating to travel reservations; computerised reservation services for travel; computerised reservation services relating to the carriage of passengers; conducting of sightseeing tours; conducting sightseeing tours; conducting sightseeing tours for others; consultancy for travel planning of routes; coordinating travel arrangements for individuals and for groups; cruise reservation services; transportation of passengers by cruise ship; transportation of passengers by cruise ship for travel; arranging of cruises; escorting of travellers; escorting of passengers; escorting of travellers; escorting of travellers and their luggage; escorting travellers; arranging excursions for tourists; fare ticket reservation, namely, {applicant must specify the services by common commercial name, e.g. travel ticket reservation service}; providing travel information to travelers regarding fares, timetables and public transport; flight planning services; hire of cars; hire of land vehicles; hire of transport vehicles; hired car transport; hiring of cars; hiring of land vehicles; hiring of motor vehicles; hiring of transport vehicles; hiring of vehicles; holiday travel reservation services; providing information relating to journeys; providing information in relation to transport; providing information relating to travel; providing information relating to travelling; information services relating to transportation; information services relating to travel; issuing of tickets for travel; itinerary planning services; itinerary travel advice services; making travel bookings; making travel reservations; minibus transport services; motor car rental; motor car transport services; motor land vehicle hire services; motor land vehicle renting; motor vehicle hire services; operating of travel tours; organisation of city sightseeing; organisation of cruises; organisation of excursions; organisation of holiday travel; organisation of sightseeing tours; organisation of travel tours; organisation of travel; organising of excursions; organising of foreign travel; organising the transportation of people; organising travel tours; organization, booking and arrangement of excursions, day trips and sightseeing tours; organization of cruises; organization of excursions; organization of holidays; organization of sightseeing tours; organization of travel tours; organization of travel; organization of travel and boat trips; organization of trips; organizing and arranging travel; package holiday services for arranging travel; passenger escort services; passenger road transport services; passenger train transport; passenger transport services; passenger transportation services; passenger transportation services by air; passenger transportation services by land; passenger transportation services by rail; passenger transportation services by sea; passenger vehicle hire; transportation of passengers by {applicant must specify the means, e.g. air, boat, rail, bus}; personal travel tour guide services; planning of journeys; pleasure boat cruises; pleasure boat transport; pleasure boat transport services; providing flight arrival and departure information; provision of computerised travel information; provision of flight information; provision of flight plans; provision of hired vehicles; provision of hired vehicles for the transport of passengers; provision of information on matters relating to travel; provision of information relating to airline scheduling; provision of information relating to transport; provision of information relating to travel; provision of information relating to travel provided by telephone; provision of information relating to travel routes; provision of sightseeing tours transport; provision of tourist travel information; provision of travel tours; provision of transport for passengers by air; provision of transport for passengers by land; provision of transport for passengers by water; provision of transport for the elderly by road; provision of travel information; railway passenger transport; railway transport; railway transport services; rental and hire of vehicles; rental car reservation; rental of automobiles; rental of boats; rental of cars; rental of chauffeur driven cars; rental of coaches; rental of motor cars; rental of motor road vehicles; rental of motor vehicles; rental of road vehicles; rental of vehicles; rental of vehicles for transport; rental of vehicles for transportation; reservation and booking of seats for travel; reservation and booking services for transportation; reservation of air transport; reservation of air transportation; reservation of coach transport; reservation of ferry transport; reservation of rail transport; reservation of seats for travel; reservation services for air travel; reservation services for airline travel; reservation services for booking seats travel; reservation services for bus transportation; reservation services for travel tours; reservation services for transportation; reservation services for transportation by air; reservation services for transportation by boat; reservation services for transportation by land; reservation services for transportation by sea; reservation services for travel; reservation services for travel by air; reservation services for travel by land; reservation services for travel by sea; transport reservation; travel ticket reservation services; river transport; road transport services for passengers; route planning services; scheduled passenger airline services; sea transportation services; seat reservation services for travel; seat reservation services for travellers; seat reservations for various forms of transport; services for arranging the transportation of travellers; services for arranging travel tours; services for arranging transportation by air; services for arranging transportation by rail; services for arranging transportation by road; services for arranging transportation by water; services for the arranging of excursions for tourists; services for the arranging of travel tours; services for the arranging of transportation; services for the arranging of travel; services for the booking of seats for travel; services for the booking of travel; services for the escorting of travellers; services for the provision of information relating to rail transport; services for the provision of information relating to travel routes; services for the rental of vehicles; services for the transportation of passengers; services for the transportation of travellers; services for transportation; sightseeing services; sightseeing tourism; organisation of sightseeing travel tours; conducting sightseeing travel tours for others; supplying tickets to enable holders to travel; ticket booking services for travel; ticket reservation services for travel; travel ticket reservation services; ticketing services for travel; timetable enquiry services relating to travel; travel tour arranging; travel tour conducting; travel tour conducting or escorting; travel tour guide services; travel tour operating; travel tour operating and organising; travel tour operating and organizing; travel tour operation services; travel tour operator services; travel tour organising; travel tour organizing; travel tour reservation services; tourist guide services; tourist travel reservation services; arranging travel tours; transport of passengers; transport of passengers by air; transport of passengers by boat; transport of passengers by bus; transport of passengers by car; transport of passengers by coach; transport of passengers by rail; transport of passengers by road; transport of people by land; transport of persons; transport of persons by land; transport of travellers; transport of travellers by air; transport of travellers by bus; transport of travellers by car; transport of travellers by land; transport of travellers by road; transport of travellers by taxi; transport of travellers by train; transportation by air of passengers; transportation of goods, passengers and travellers by air; transportation of passengers; transportation of passengers and goods by rail; transportation of passengers and passengers' luggage; transportation of passengers by air; transportation of passengers by airship; transportation of passengers by boat; transportation of passengers by bus; transportation of passengers by coach; transportation of passengers by ferryboat; transportation of passengers by land; transportation of passengers by minibus; transportation of passengers by rail; transportation of passengers by road; transportation of passengers in chauffeur driven vehicles; transportation of travellers; travel booking services provided by travel agencies; travel agency; travel agency and booking services; travel agency services; travel agency services for arranging holiday travel; travel agency services for arranging travel; travel agency services for sea travel; travel agency services, namely, making reservations and bookings for transportation; travel agents services for arranging travel; travel and tour agency services; travel tour information service; travel and tour ticket reservation service; travel and transport information and advisory services; travel and transport reservation services; travel arrangement; travel arrangement services; travel arrangements; travel, excursion and cruise arrangement; travel booking agencies; travel courier; travel courier and travel guide services; travel courier services; travel guide and travel information services; travel guide services; travel information; travel information services; travel reservation; travel reservation and booking services; travel reservation services; travel reservations; travel services; travel ticket reservation services; escorting of travellers; transport of travellers; trip planning services; vehicle hire; charter services
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 at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
Response Guidelines
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp
/Jay K Flowers/
United States Patent and Trademark Office
Trademark Examining Attorney
Law Office 112
571.272.8202
jay.flowers@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.