Offc Action Outgoing

This letter responds to applicant’s communication filed on September 19, 2007. In this communication, applicant submitted an amended identification of services and the corresponding additional class fees. Applicant did not respond to the refusal to register under Section 2(e)(1).

The amended identification of services is accepted.

The refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), is now made FINAL. 37 C.F.R. §2.64(a).

FINAL Refusal: Section 2(e)(1) - Descriptive Refusal

As stated in the previous Office action, registration is refused because the proposed mark merely describes a feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

Applicant’s proposed mark is OPEN INNOVATION COLLABORATIVE, and applicant identifies its services as “Consulting in the field of business innovation; arranging and conducting of business conferences; advertising services, namely, promoting the services of other companies; arranging and conducting trade shows in the field of innovation consulting services, all to companies seeking to improve their innovation capability and achieve greater sales growth,” and “Training in the field of business for companies seeking to improve their innovation capability and achieve greater sales growth” (as amended).

OPEN means “ready and willing to accept or listen to something such as new ideas or suggestions.” INNOVATION means “the act or process of inventing or introducing something new.” COLLABORATIVE means “working with another person or group in order to achieve something.” See dictionary evidence attached to the previous Office action, and Lexis® evidence attached to this Office action, showing that the terms OPEN, INNOVATION, and COLLABORATIVE are usedto describe an approach to business. In addition, as stated above, applicant identified its services, in part, as services “to companies of all types seeking to improve their innovation capability.”

As stated in the previous Office action, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services). The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, or the mark so created imparts an incongruous meaning as used in connection with the services. Where, as in the present case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the services, the mark is merely descriptive. E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662.

The proposed mark is merely descriptive of applicant’s services, because it immediately conveys to prospective consumers features of applicant’s services, namely, that its services facilitate an OPEN INNOVATION COLLABORATIVE, or a group working together to help achieve or introduce something new. Accordingly, the refusal under Section 2(e)(1).

Supplemental Register

As stated in the previous Office action, although an amendment to the Supplemental Register would normally be an appropriate response to this refusal under Section 2(e)(1), such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.

If applicant files an amendment to allege use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

Response to FINAL Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:

(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/kristindahling/

Kristin M. Dahling

Trademark Attorney, Law Office 113

U.S. Patent and Trademark Office

(571) 272-8277

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

108B8C

Time of Request: Wednesday, October 31, 2007 15:54:40 EST

Client ID/Project Name:

Number of Lines: 568

Job Number: 1842:56907516

Research Information

Service: Terms and Connectors Search

Print Request: Selected Document(s): 1-5,8-13,15-20,22-24,27-29

Source: Combined Source Set 5

Search Terms: nocaps(open w/5 innovation w/5 collaborative)

ICIS Chemical Business

September 3, 2007

SECTION: FEATURES

LENGTH: 3205 words

HEADLINE: Innovation Where next?

BYLINE: John Baker

BODY:

...business unit ready and willing to take on the development as it emerges from the laboratory into the commercial phase. CollaborationFor some, the use of open innovation and collaborative projects is one way forward to see that innovations meet specific customer needs. Martin Riediker of Ciba Specialty Chemicals ...

2 of 30 DOCUMENTS

Printing News

August 20, 2007

SECTION: YOUR BUSINESS; MARKET TRENDS; Pg. 1 Vol. CLVIII No. 7

LENGTH: 1743 words

HEADLINE: TrendSpotting: Sustainability Part 3

BYLINE: By Craig Liska

BODY:

...at MIT's School of Engineering and support multiple master's and doctoral degree candidates annually. This is part of Xerox's ongoing support of open innovation and collaborative research worldwide.

The Xerox Fellows will focus on:

Green Processes and Technologies?Research will focus on understanding ...

3 of 30 DOCUMENTS

ComputerWorld

July 12, 2007

SECTION: NEWS

LENGTH: 966 words

HEADLINE: Geoffrey A. Moore;

The best-selling business author and innovation guru tells how to neutralize the competition, where to spend those productivity savings and why scrimping on IT is just dumber than dirt.

BYLINE: Julia King

BODY:

...in large corporations, it's not a good model. You need a fabric of innovation where people can be thoughtful, open and systematic about innovation.

Companies are inherently hierarchical, not collaborative. Increasingly, they're more decentralized and geographically dispersed. How does this affect innovation? This is the big challenge. You'd like people to transform their ...

4 of 30 DOCUMENTS

Network World

March 23, 2007

SECTION: Pg. 10

LENGTH: 183 words

HEADLINE: Guide to Linux

BYLINE: Network World Staff

BODY:

...panorama/032107pan-linux.mp3'; // external js embedaudiohome(srcfile); } writeflashcode(); LinuxWorld keynotesRandy Allen discusses the implications of an open and collaborative approach to technology innovation in this LinuxWorld OpenSolutions Summit keynote. CLICK HERE TO VIEW THE VIDEONovell CIO Debra Anderson shares how Novell made that ...

5 of 30 DOCUMENTS

COMMWEB

October 30, 2006 Monday 12:05 AM GMT

LENGTH: 2403 words

HEADLINE: How To Avoid The Patent Trap

BODY:

...debate within the tech industry about the role patents should play in a Web 2.0 ecosystem characterized by open source development, collaborative innovation, and fast product cycles. "There are some pathologies in the system that need to be dealt with," Harvard Business School professor Josh Lerner ...

8 of 30 DOCUMENTS

Global News Wire - Asia Africa Intelligence Wire

Business Daily Update

October 24, 2006 Tuesday

LENGTH: 1045 words

HEADLINE: SHARED WEALTH

BODY:

...proprietary products, while at the other end, we lead the world in supporting the sharing of IPR when it can drive open standards and collaborative innovation." Strong environment As an observer, IBM has seen that since China joined the WTO, it has made significant improvement in its ...

9 of 30 DOCUMENTS

Network World

September 6, 2006

LENGTH: 583 words

HEADLINE: How one IBMer got out of a career rut;

* Darryl Solie rejuvenated his engineering career by moving into a customer-facing role

BYLINE: Linda Leung

BODY:

...at first, Solie says the move "rejuvenated my enthusiasm for technology," and he believes the model of working with customers on "collaborative innovation" will open many more doors for those seeking careers in the engineering, technology and business fields.

10 of 30 DOCUMENTS

The Economist

August 12, 2006

U.S. Edition

SECTION: SCIENCE & TECHNOLOGY

LENGTH: 1064 words

HEADLINE: A shot of transparency;

Global health

BODY:

...definitively global phenomenon," argues Samuel Palmisano, IBM's chairman. "Our response must be similarly global, and must rely...on open, collaborative innovation."

11 of 30 DOCUMENTS

Business and Management Practices

Research Technology Management

July 2006

SECTION: Pg. 64 Vol. 49 No. 4 ISSN: 0895-6308

LENGTH: 187 words

HEADLINE: Primer on "open innovation": Principles and practice.

BODY:

The CEO of consulting and new ventures company Venture2 Inc. provides an overview of the principles of open and collaborative innovation, as well as best practices for implementing them. After describing practices at Nokia Venturing, Spalding, Procter & Gamble, and others, ...

...for your organization's tolerance for risk.

* Put the focus on learning, not just results.

* He predicts that, "If you embrace open innovation principles and learn to implement these collaborative approaches successfully within your culture and organization, you'll create your own 'next big thing,'; and, more importantly, ...

12 of 30 DOCUMENTS

St. Louis Post-Dispatch (Missouri)

May 14, 2006 Sunday

FIRST EDITION

SECTION: BUSINESS; Pg. E5

LENGTH: 996 words

HEADLINE: Seven rules for managing, profiting from innovation "Making Innovation Work" offers seven rules for getting the most out of new ideas.

BYLINE: BILL FINNIE

BODY:

...either change or leave.

6. Cultivate an innovation network beyond the company.

The individual is not the basic building block of innovation. Instead, innovation requires an open, collaborative network of people. The network should extend across departments within the company. It also should extend beyond the company and include customers, suppliers and ...

13 of 30 DOCUMENTS

Global News Wire

KRTBN Knight-Ridder Tribune Business News - The Middle East and North Africa Business Report

April 24, 2006 Monday

LENGTH: 324 words

HEADLINE: IBM MIDDLE EAST EXTENDS INNOVATION WITH CHANNEL PARTNERS

BODY:

...said Mr.

Mourad Zohny "We have helped clients of all sizes in the past to succeed by unleashing new aspects of innovation across their business: innovation that is open, collaborative, global and multidisciplinary. We will continue to proceed down this route of success."

15 of 30 DOCUMENTS

San Jose Mercury News (California)

April 2, 2006 Sunday

SECTION: PE; Pg. OP1

LENGTH: 716 words

HEADLINE: Open collaboration spawns innovation; barriers stifle it

BYLINE: Scott McNealy

BODY:

...answering ``What is the next big thing?'' than we know. Maybe you're even working on it. Whatever the case, we know an open, collaborative attitude toward innovation will usher in Google Jr.

SCOTT MCNEALY is the chairman and CEO of Sun Microsystems. He wrote this article for the Mercury ...

16 of 30 DOCUMENTS

Canadian Business

March 27, 2006 / April 9, 2006

SECTION: INFORMATION SUPPLEMENT; Innovation In Business Series; Pg. 25

LENGTH: 1076 words

HEADLINE: Case Study: How Procter & Gamble Embedded Innovation into its DNA

BYLINE: by Heather Fraser, Executive Director -- Business Design TM Initiative, Desautels Centre for Integrative Thinking TM, Rotman School of Management

BODY:

...unleashing brainpower like never before.

Same controlling, insular, linear company of the past? Hardly. The Procter & Gamble of today is an open-mined, collaborative, dynamic culture of innovation which proves that with a commitment to cultural innovation, the mothership can indeed rewrite its own rules and succeed like never before.

17 of 30 DOCUMENTS

Optimize

December 1, 2005

SECTION: COLLABORATIVE STRATEGIES; Pg. 54

LENGTH: 4120 words

HEADLINE: Realizing The Power Of Innovation Webs -- Traditional enterprises give way to new models where innovation is collaborative, distributed, and open

BYLINE: Don Tapscott and Anthony Williams

BODY:

...yielding to joint ventures, licensing, outsourcing, and peering. And it's the reason hierarchical enterprises must adopt business-web models, where innovation is collaborative, distributed, and open.

...Avoiding these problems-not to mention trouble with the antitrust authorities-is one reason a growing number of companies are embracing more open models of collaborative innovation.

- Peer-production communities are I-webs that self-organize to create tightly integrated value propositions. They strive for high- ...

...But bear in mind that internal R&D and external acquisitions are complements, not substitutes.

Sustaining an open-innovation ecosystem also means cooperating to supply the open standards, shared IP, and collaborative infrastructures that will kick-start the open-innovation process. Cooperating means overcoming the problems of motivating and coordinating collective action. The secret to collective action and collaboration webs is building ...

18 of 30 DOCUMENTS

Computimes (Malaysia)

November 14, 2005

SECTION: UPDATE; LOCAL; Pg. 6

LENGTH: 521 words

HEADLINE: Boost for health and education

BYLINE: Foo Eu Jin

BODY:

......

deploys its intellectual property portfolio, which places a focus on open

standards and collaborative innovation.

...

19 of 30 DOCUMENTS

CQ Congressional Testimony

July 21, 2005 Thursday

SECTION: CAPITOL HILL HEARING TESTIMONY

LENGTH: 4293 words

COMMITTEE: HOUSE SCIENCE

HEADLINE: U.S. INNOVATION

TESTIMONY-BY: NICHOLAS DONOFRIO, EXECUTIVE VICE PRESIDENT

AFFILIATION: IBM CORPORATION

BODY:

...trends and a solid base from which to make national recommendations. IBM is aligned around a single, focused business model -- innovation. Innovation that is collaborative, open and multidisciplined.

TRENDS

History suggests that a sustained period of growth is about to begin for the $1.4 trillion information technology ...

20 of 30 DOCUMENTS

Optimize

July 1, 2005

SECTION: STRATEGIC INNOVATION; Pg. 39

LENGTH: 2678 words

HEADLINE: Using Mergers To Spark Creativity

BYLINE: George Chen, Pierre Loewe, and Naveed Moosa

BODY:

...Microsoft's appointment of Ozzie as CTO sends a clear message that innovation is highly valued.

- Culture and values: Companies with an innovation competency have collaborative, open cultures that reward challenging the status quo. At Virgin, bureaucracy and hierarchy are anathema, and challenging industry conventions is the norm. In ...

22 of 30 DOCUMENTS

The News & Observer (Raleigh, North Carolina)

February 14, 2005 Monday

Final Edition

SECTION: EDITORIAL/OPINION; Point of View; Pg. A13

LENGTH: 904 words

HEADLINE: Sharpening N.C.'s edge with innovation

BYLINE: Barry W. Eveland

BODY:

...Era in which we find ourselves requires more of a balance between proprietary innovation (for income and competitive advantage) and collaborative innovation (for interoperability, open standards and public benefit). This new focus on collaborative innovation holds the greatest potential to spark economic growth for our ...

23 of 30 DOCUMENTS

ASAP

Journal of Banking and Financial Services

February 1, 2005

SECTION: No. 1, Vol. 119; Pg. 32; ISSN: 1443-6035

IAC-ACC-NO: 131686743

LENGTH: 2548 words

HEADLINE: The innovation outlook: Graham Fletcher, a senior executive with IBM, one of the world's leading technology originators, examines the latest technologies and those ahead, as a new on-demand era of innovation emerges; Innovation Supplement

BYLINE: Fahrer, Marion

BODY:

...A. If you look at IBM's latest Global Technology Outlook it indicates that in the early days of the 21st century, innovation is occurring more rapidly, and is more open and collaborative than ever before.

Most managers within banks have business problems that they want to solve or processes that they need to optimise, and there is widespread recognition that banks that ...

24 of 30 DOCUMENTS

ASAP

Journal of Banking and Financial Services

February 1, 2005

SECTION: No. 1, Vol. 119; Pg. 1; ISSN: 1443-6035

IAC-ACC-NO: 131686728

LENGTH: 173 words

HEADLINE: Welcome to the February/March 2005 edition of B+FS; Editorial

BYLINE: Fahrer, Marion

BODY:

According to industry experts, the speed of commercialisation of new ideas is accelerating and innovation is becoming increasingly open and collaborative in the 21st century. In addition, Australia is leading the world in its approach to open innovation, through information sharing and ...

27 of 30 DOCUMENTS

Electronics Weekly

April 02, 2003

SECTION: News; Pg. 3

LENGTH: 715 words

HEADLINE: News Bulletin

BYLINE: Staff

BODY:

...mainly due to technology issues. SH-E's system is said to be capable of 2Mbit/s in both directions.

Minister opens innovation centre

Staff

A new collaborative centre for work on innovation and the exploitation of technology will be opened by Lord Sainsbury, the Minister for Science and ...

28 of 30 DOCUMENTS

Chemical Week

September 25, 2002

SECTION: Pg. 29

LENGTH: 3229 words

HEADLINE: Strategic Sourcing & eProcurement;

It's Not What You Buy, But How You Buy It

BODY:

...stemming off slow growth and ever mounting price pressures. Many segments of chemical industry are also experiencing increased pressure to improve their innovation rate and to open and uncover opportunities around outsourcing and collaborative product development. As a result, many leading firms are spending an ever-increasing percentage of their R&D budget on ...

29 of 30 DOCUMENTS

Christian Science Monitor (Boston, MA)

November 1, 2001, Thursday

SECTION: FEATURES; BOOKS; Pg. 19

LENGTH: 910 words

HEADLINE: Profit vs. innovation

BYLINE: Douglas McGray

BODY:

...wires became a blank slate of a network, and new phone companies emerged, along with the Internet and a wave of innovation based on its open, collaborative ethic.

Lessig fears that overaggressive regulators and big firms are again wielding intellectual property law to reassert control and threaten the ...