Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

OPENING

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, 2.65(a); TMEP §§711, 718.03.

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

INFORMALITIES

Before the application can be considered further, the following informal issues must be addressed.

CLASS 16 - IDENTIFICATION OF GOODS

The wording “Print materials; namely, (the semi-colon renders the identification indefinite and should be replaced with a comma) magazines, pamphlets and brochures in the field of alumni news and alumni association services, bumper stickers, pens, pen sets (indefinite must indicate what the set is comprised of), pencils, erasers, pencil toppers, namely, decorative pencil-top ornaments, loose leaf binders, bookmarks, book covers, photographic albums, appointment books, art photographs, namely, photographs that have been computer manipulated and enhanced to contain graphic elements, photos (indefinite), address books, paper banners, clip boards, magnetic boards, notepads, note pad holders, scrapbooks, catalogs in the field of alumni goods, newsletters in the field of alumni events, news and association services, notebooks, composition books, picture books, stationary-type portfolios, paper gift wrap, calendars, blank cards, gift cards, greeting cards, business cards, writing paper and notepaper, postcards, decals, paper labels, bank checks, checkbook covers, rubber stamps, books in the field of alumni history and members, binders, lithographs and prints, prepaid telephone calling cards, not magnetically encoded, credit cards without magnetic encoding, transferable temporary tattoos, stickers, posters, party goods, namely, paper party favors, paper napkins, and paper party decorations, desk accessories, namely, baskets, desk pads, file trays, desk (indefinite) organizers, desk (indefinite) planners, desktop revolving rotary card files, desk calendars, printed paper labels for bottled water” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s goods. See TMEP §1402.01. Applicant may substitute the following wording, if accurate:

Class 16 - Print materials, namely, (please note the use of a comma) magazines, pamphlets and brochures in the field of alumni news and alumni association services, bumper stickers, pens, pen sets comprised of _______________ [specify the major components], pencils, erasers, pencil toppers, namely, decorative pencil-top ornaments, loose leaf binders, bookmarks, book covers, photographic albums, appointment books, art photographs, namely, photographs that have been computer manipulated and enhanced to contain graphic elements, photographs, address books, paper banners, clip boards, magnetic boards, notepads, note pad holders, scrapbooks, catalogs in the field of alumni goods, newsletters in the field of alumni events, news and association services, notebooks, composition books, picture books, stationary-type portfolios, paper gift wrap, calendars, blank cards, gift cards, greeting cards, business cards, writing paper and notepaper, postcards, decals, paper labels, bank checks, checkbook covers, rubber stamps, books in the field of alumni history and members, binders, lithographs and prints, prepaid telephone calling cards, not magnetically encoded, credit cards without magnetic encoding, transferable temporary tattoos, stickers, posters, party goods, namely, paper party favors, paper napkins, and paper party decorations, desk accessories, namely, baskets, desk pads, file trays, desktop organizers, desktop planners, desktop revolving rotary card files, desk calendars, printed paper labels for bottled water

Class 25

Acceptable as stated.

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

RECITATION OF SERVICES

Advisory

Although applicant’s use of its own registration in a recitation is acceptable, applicant’s use of a registration in a recitation should be limited to using the registered mark only as an adjective and it should be followed with the generic names of the goods or services offered under its mark. See TMEP Section 1402.09

Class 35

The wording “Providing information to alumni and members and friends of the University of Houston Alumni Association regarding business networking and alumni association services ; providing information to alumni and members and friends of the University of Houston Alumni Association regarding business networking and alumni association services (indefinite because it does not properly specify the association services) online; lobbying services, namely, promoting the interests of the University of Houston; advertising services for others in University of Houston print and web publications (indefinite because it does not properly identify a type of advertising services) because it does not specify the ” in the identification of services is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s services. See TMEP §1402.01. 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).

Applicant may substitute the following wording, if accurate:

Class 35 - Providing information to alumni and members and friends of a university regarding business networking and association services, namely, promoting the interests of the alumni of a university; providing information via the Internet to alumni and members and friends of a university regarding business networking and association services, namely, promoting the interests of the alumni of a university; lobbying services, namely, promoting the interests of a university; advertising services, namely, promoting the goods and services of others for others through university print and web publications

Class 36

The wording “Providing information to alumni and members and friends of the University of Houston Alumni Association regarding scholarship opportunities; providing information to alumni and members and friends of the University of Houston Alumni Association regarding scholarship opportunities online” in the identification of services is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s services. See TMEP §1402.01. 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).

Applicant may substitute the following wording, if accurate:

Class 36 - Providing information to alumni and members and friends of a university in the field of scholarship opportunities; providing information via the Internet to alumni and members and friends of a university in the field of scholarship opportunities

Class 41

The wording “Providing information to alumni and members and friends of the University of Houston Alumni Association regarding entertainment and educational opportunities; providing information to alumni, members and friends of the University of Houston Alumni Association regarding entertainment and educational opportunities online” in the identification of services is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s services. See TMEP §1402.01. 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).

Applicant may substitute the following wording, if accurate:

Class 41 - Providing information to alumni and members and friends of a university in the fields of entertainment and educational opportunities; providing information via the Internet to alumni, members and friends of a university in the fields of entertainment and educational opportunities.

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

DISCLAIMER

Applicant has submitted a disclaimer of the wording ALUMNI ASSOCIATION. However, applicant must modify the disclaimer to include the geographically descriptive term HOUSTON. Accordingly, applicant must disclaim the descriptive wording “HOUSTON ALUMNI ASSOCIATION” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a).

Specifically, the attached evidence from an online dictionary shows that HOUSTON is a large and well-known city in the State of Texas. Applicant’s services originate in the Houston area. Accordingly, the term HOUSTON is geographically descriptive..

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark. TMEP§1213. An unregistrable component of a mark includes wording and designs that are merely descriptive or generic or primarily geographically descriptive of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.

The following is the standard format used by the Office:

No claim is made to the exclusive right to use “HOUSTON ALUMNI ASSOCIATION” apart from the mark as shown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

MARK ON SPECIMEN DOES NOT MATCH MARK ON DRAWING PAGE – CLASSES 35 AND 35

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as UH ALUMNI; and the drawing shows the mark as UH HOUSTON ALUMNI ASSOCIATION.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing. Specifically, it creates a different commercial impression because the wording HOUSTON and ASSOCIATION specifies the fact that applicant is located in Houston and it is an association.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

CLOSING

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/William H. Dawe, III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

bill.dawe@uspto.gov (not for formal responses)

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

Offc Action Outgoing

UH HOUSTON ALUMNI ASSOCIATION

The University of Houston System

Offc Action Outgoing

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

INFORMALITIES

RECITATION OF SERVICES

Advisory

Class 35

Class 36

Class 41

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