| To: | University of Alaska Fairbanks (fnkdml@uaf.edu) |
| Subject: | TRADEMARK APPLICATION NO. 76530947 - UAF UNIVERSITY OF ALASKA FAIRBANKS - N/A |
| Sent: | 1/28/04 1:27:49 PM |
| Sent As: | ECom114 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/530947
APPLICANT: University of Alaska Fairbanks
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CORRESPONDENT ADDRESS: UNIVERSITY OF ALASKA FAIRBANKS 320 SIGNERS HALL BOX 757560 FAIRBANKS, AK 99775
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: UAF UNIVERSITY OF ALASKA FAIRBANKS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: fnkdml@uaf.edu |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/530947
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
The applicant must disclaim UNIVERSITY OF ALASKA apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The applicant is using the mark to identify “educational services in Alaska.” If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the applicant's services are performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services originate. In re Chalk's International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991). The applicant is located in Alaska thus, a connection is presumed. UNIVERSITY is generic for the identified services
Language of the Disclaimer
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use UNIVERSITY OF ALASKA apart from the mark as shown.
The wording in the identification of services is unacceptable as indefinite. It also appears the services may be classified in more than one class. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
The applicant may adopt the following recitation(s)/classification(s), if accurate:
International Class 035: Promoting university level educational services of others through the distribution of books, posters, signs, brochures, pamphlets, postcards, catalogs, stationery, business cards, envelopes, maps, calendars, flyers, newsletters, CD-ROMS, manuals, instructional texts, and through the placement of advertisements in newspapers, magazines, and television.**
International Class 041: Educational services in the nature of courses at the university level via traditional one-on one method, via television or a global computer network; online information about educational services at a university level.
To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970). See TMEP §1301.01(b)(i). TMEP §1301.01(a)(ii)
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
(3) Applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and
(c) both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).
If applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in .jpg format. 37 C.F.R. §2.56(d)(4).
THIS REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
If applicant should fail to respond to this Office action within the six month time limit, then the services subject to amendment will be deleted from the application and the application will then proceed forward for the remaining services only.
The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions. It is the applicant's duty and prerogative to identify the goods and services.
For additional information about the proper identification of goods and recitation of services the applicant may refer to an on-line copy of the “Trademark Acceptable Identification of Goods and Services Manual” located at the United States Patent and Trademark Office Website, http://atlas/netahtml/tidm.html.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. In the present case, the drawing displays the mark as UAF with the design of a bear interposed on the letter A, the wording, UNIVERSITY OF ALASKA and FAIRBANKS underneath, and the specimen shows the mark as UNIVERSITY OF ALASKA FAIRBANKS with the acronym UAF in another manner and without the design of the bear interposed on the A . 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i). Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.
Therefore, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. 37 C.F.R. §2.51; TMEP §807.14.
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
Additionally, the specimen of record although unacceptable for the above mentioned reason, would only be acceptable for Class 41 NOT 35.
/Ysa de Jesus/
Trademark Attorney
US Patent and Trademark Office
(t)703.308.9114 x-476
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.