UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/003616
APPLICANT: Georgetown University
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: IM TK
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CORRESPONDENT’S REFERENCE/DOCKET NO: G0762.20000U
CORRESPONDENT EMAIL ADDRESS: |
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 77/003616
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
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. However, the applicant must address the following informalities:
The application identifies applicant as “educational institution” of D.C. This is not an acceptable entity designation because it does not clearly state the legal nature of the institution. TMEP §803.03.
Therefore, applicant must specify the type of entity applying, e.g., corporation, unincorporated association, partnership or joint venture. In this regard, the examiner notes that applicant’s most recent application appears to identify applicant as a “Congressionally-chartered Corporation” of the District of Columbia (see attached). 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.
Applicant has identified its services as “Indicating membership in a consortium of academic institutions whose mission is to allow scientists, engineers and physicians to develop software that enables the exchange, sharing, management and analysis of multimedia medical information; Computer software that enables the exchange, sharing, management and analysis of multimedia medical information.”
This identification of goods/services is generally unacceptable as indefinite. Applicant appears to indicate an intention to use the mark both as a source indicator for computer software and to indicate membership “in a consortium of academic institutions” dedicated to the development of software.
Applicant must clarify whether it is applying for a collective mark or a trademark for the identified goods and/or services. A collective mark is not the same as a trademark or service mark, i.e., it is not used to identify the individual source of goods or services. Rather, a collective mark is used by members of a collective organization to indicate that the goods or services come from a member of applicant’s organization. Members of the group use the mark and no one member owns the mark; the collective organization holds title to the mark for the benefits of the members of the group. Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1303.
In this case, applicant does not provide necessary information regarding intended use and control required for a collective mark. Moreover, the fact that applicant is identified as a specific university, rather than the identified collective entity, suggests that the mark is not collective in nature. Under the Trademark Act, a collective mark must be owned by a collective entity even though the mark is used by the members of the collective. TMEP Sec. 1302. If applicant Georgetown University does not itself represent the entire identified collective, the applicant may be considered void as filed by someone other than the owner. Only the owner of a mark may apply to register the mark. TMEP §§803.01, 803.06, and 1201.02(b).
Accordingly, applicant must clarify its goods/services and classify them correctly. For instance, to the extent the mark is intended to be used for computer software, the goods must be reclassified in Class 9. Applicant also must clarify the nature of the functions of “exchange” and “analysis.” With respect to the term “analysis,” this clarification is required to ensure proper classification of the goods, since certain software used to operate medical devices is properly classified in Class 10. The goods may be clarified as follows, if accurate:
“Computer software for electronic transmission, sharing, management and analysis of multimedia medical information including clinical information, images, and bioinformatics data,” in Class 9.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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 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.
Advisory: Combined Application
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods/services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
The filing fee for adding classes to an application is as follows:
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant, in fact, intends to seek registration of a collective membership mark, a whole form correction of the application will be required. In such case, please complete and return the form for a collective membership mark that follows. TMEP §§1304 et seq. A new filing fee is not required.
Please note that a collective membership mark’s sole purpose is to indicate that the user of the mark is a member of applicant’s organization. A collective membership mark is not a trademark or service mark and it does not serve to identify the source of goods or services.
Collective Membership Mark Application 15 U.S.C. §1054
Principal Register - Substitute Application
(Fill in Sections 1-7 below. Sign and Date.)
(1) Application Serial Number:
(2) Applicant’s Name:
(3) Applicant’s Mailing Address:
(4) Applicant’s Entity Type: (Check one and supply requested information)
____ Individual – Citizen of (Country):
____ Partnership – U.S. State where organized (Country, if appropriate):
Names and Citizenship (Country) of General Partners:
____ Corporation – U.S. State (Country, if appropriate) of Incorporation:
____ Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):
(5) SPECIFY THE TYPE OR NATURE OF APPLICANT’S ORGANIZATION – e.g., a social club, labor union, political party, association of real estate brokers, etc.
To indicate membership in a/an _____________________________________________
(6) MANNER OF CONTROL OF MARK: A collective membership mark is used by the members, and applicant must specify how it controls use (or will control use) of the mark by the members. If applicant’s bylaws or other written provisions specify the manner of control, or intended manner of control, then applicant should include a statement that “applicant’s bylaws and other written provisions specify (or will specify, if this is an intent to use application) the manner of control of the mark.” (specify manner of control immediately below)
(7) BASIS FOR APPLICATION: (Check basis or bases which apply, but do not check both the first and second bases (A & B) for the same goods or services– and supply requested information related to each basis)
Applicant has adopted and is exercising legitimate control over the use of the mark in commerce by its members, and has been exercising legitimate control of the use of the mark since the filing date of the application.
A specimen showing the mark used by members is submitted with this application.
Specify Date of First Use Anywhere by Members:
Specify Date of First Use in Commerce by Members:
Applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members to indicate membership, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members to indicate membership, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Filing:
Specify Foreign Application Serial No.:
Specify Date Foreign Application Filed:
Applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members to indicate membership, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Registration:
Specify Foreign Registration Number:
Specify Registration Date:
The undersigned being hereby warned that willful false statements and the like are made punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that s/he is properly authorized to execute this application on behalf of applicant; that s/he believes applicant to be the owner of the collective membership mark sought to be registered, or if the application is filed under 15 U.S.C. §1051(b) or §1126, that s/he believes applicant is entitled to exercise legitimate control over the use of the mark in commerce; that, to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the above identified mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements are made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
Date:
Signature:
Print or Type Name and Position of Signatory
USE OF GRAY IN DRAWING
Applicant’s drawing of the proposed mark contains gray shading in the arrow/X-ray design. Although use of gray is permissible, it may be regarded alternately as a color specifically claimed as an element of a mark or merely as shading within a black and white mark for which no color claim is made. Since it is unclear whether the applicant intends to claim the color gray as an element of the mark, the applicant must clarify this ambiguity.
Color claimed as a feature of the mark:
If color is claimed as a feature of the mark, the applicant must (1) state that color is claimed as a feature of the mark, (2) identify the colors claimed (including any use of the colors black or white), and (3) describe where in the mark the colors appear, e.g.:
“The colors black, white and gray are claimed as a feature of the mark. The letters IM TK are in black. The arrows and circular border are in gray. The central X-ray image illustration is in gray and white.”
If the mark is not in color:
If the mark is not in color, the applicant may simply state for the record that the mark is not in color. In the alternative, the applicant may submit a new black and white drawing with the gray shading removed.
The requirements for a special-form drawing are as follows:
37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54; TMEP §§807.06 et seq.
The Office strictly enforces these drawing requirements.
To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication. The requirements for an electronically submitted special-form drawing are as follows:
37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c).
Applicant must specify whether the letters IM TK used together or apart have any significance in the medical or computing trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
Applicant must submit a concise description of the design element of mark. 37 C.F.R. §2.37; TMEP §§808 et seq. The following is suggested:
The mark consists in part of a photographic illustration of a human chest X-ray image.”
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.