This responds to the Office Action dated October 15, 2003.
Amendment
Applicant ("Georgetown") respectfully requests that its application be
amended to identify Georgetown as a "Congressionally chartered
corporation located in the District of Columbia".
Response
Georgetown responds below to the issues raised by the Trademark Attorney
in the Office Action. Specifically, the Trademark Attorney refused
registration claiming that Georgetown's mark SDM merely identifies a
process and would not be perceived as a trademark. The Trademark
Attorney also found Georgetown's description of services and its type of
entity to be unacceptable.
1. Georgetown's Mark SDM Functions as a Trademark
Georgetown respectfully disagrees with the Trademark Attorney's claim
that Georgetown's mark SDM merely identifies a process. Rather,
Georgetown's mark serves to identify both the process and the services
rendered by means of the process, such that Georgetown's mark should be
registrable as a service mark. See Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305 (TTAB 1979) (finding that the mark
LIQWACON identified both a waste treatment and disposal service as well
as a chemical solidification process).
The name of a process is registrable provided (i) applicant is
performing the service and (ii) the mark identifies the source of the
service. See Trademark Manual of Examining Procedure Sec. 1301.02(e).
The specimen that Georgetown submitted, advertising from its Web site,
establishes that SDM identifies a method (process) of natural family
planning and health services offered by Georgetown in connection with a
natural family planning program. As to the first prong of the test,
Georgetown offers to others SDM health services, which utilize a natural
family planning method. As to the second prong, there is a direct
association between Georgetown's mark SDM and the offer of its services.
The specimen ad that Georgetown submitted references two family health
services it offers: the STANDARD DAYS METHOD or SDM service and the
TWODAY METHOD service.
As stated by the Court of Customs and Patent Appeals, "no authority is
cited, and none has been found, to the effect that a trademark use
requires a display of a design of any particular size or degree of
prominence. The important question is not how readily the mark will be
noticed, but whether, when it is noticed, it will be understood as
indication origin of the goods". In re Singer Mfg. Co., 118 USPQ 310,
312 (CCPA 1958). Here, Georgetown is only advertising in part to the
average consumer. Thus, the ad at its Web site is not the traditional
ad geared to capture the average consumer's attention by identifying the
mark in bright, bold lettering. In large part, Georgetown is
advertising its services to a highly sophisticated audience interested
in the newest natural family planning methods and services relating
thereto. These consumers will readily recognize that SDM is used to
refer to the service offered by Georgetown.
2. Georgetown's Description of Services Should be Accepted as Filed
The Trademark Attorney objected to Georgetown's identification of
services, "family health services, namely, a family planning program
utilizing a mnemonic device for monitoring a woman's fertility" as
indefinite and therefore, unacceptable. Georgetown has worked with
other Trademark Attorneys in the past to devise this description of
services so there would be continuity with respect to the description of
services it uses for marks for the same or similar services. See, e.g.,
METODO DE DIAS FIJOS, Ser. No. 76/538,313, and STANDARD DAYS METHOD,
Ser. No. 76/510,773.
3. Georgetown has Amended the Description of Its Type of Entity
In response to the Trademark Attorney's objection that Georgetown's
description of its type of entity was unacceptable, Georgetown amended
the description as set forth above. Georgetown recently amended its
application for METODO DE DIAS FIJOS, Ser. No. 76/538,313, in the same
manner by an Examiner's Amendment on April 7, 2004.
* * *
As no other issues remain, Georgetown respectfully requests that its
application for SDM, Ser. No. 76/510,774, be approved for publication.
Respectfully submitted,
COLLIER SHANNON SCOTT, PLLC
By: /Nancy H. Lutz/
Nancy H. Lutz
3050 K Street, NW
Suite 400
Washington, DC 20007-5108
Phone: (202) 342-8851
Attorney for Applicant
Georgetown University
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