Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/329614

 

This letter responds to applicant’s communication filed on December 20, 2004.

 

The amended recitation of services is accepted and entered into the record.  Applicant is further advised as follows:

 

Amendment to Claim Acquired Distinctiveness is Refused; Section 2(e)(2) Refusal of Registration is CONTINUED

 

The amendment to claim an acquired distinctiveness of the subject mark, and to thus overcome the Section 2(e)(2) refusal of registration, is noted, but cannot be accepted for the reasons set forth below.  Since the amendment to claim acquired distinctiveness is not presently acceptable, and as the applicant has presented no other argument in opposition to the finding of the primarily geographically descriptive nature of the mark, the refusal of registration pursuant to Section 2(e)(2) of the Trademark Act is CONTINUED.

 

 

Bases for Non-Acceptance of Claim of Acquired Distinctiveness:

 

1.  One reason why the claim of acquired distinctiveness now of record cannot be accepted is because the form of the claim based on the statutory presumption of acquired distinctiveness based on five years use of the mark is defective.  That is, while the form of the claim submitted by the applicant avers distinctiveness by continuous use of the mark  for at least five years preceding the date of the declaration, the claim fails to: 1) aver that such use was substantially exclusive and continuous use in commerce; and 2) aver that such use of the mark UNIVERSITY OF VIRGINIA PATENT FOUNDATION was in association with the services identified in the subject application.

To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the services identified in Application Serial No. 78/329614 through applicant’s substantially exclusive and continuous use of the mark in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

2.  The second reason why the claim of acquired distinctiveness now of record cannot be accepted is because the claim is not properly verified.

 

As stated in TMEP Section 804.01, the format for verification of statements before the Trademark Office may be: (1) the classical form for verifying, which includes an oath (jurat); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath.

 

In the case of a verification by oath or jurat, the oath should first set forth the venue; followed by the signer’s name (or the words “the undersigned”); then the necessary statements; concluding with signature. After the signature there should be the jurat for the officer administering the oath, and an indication of the officer’s authority (such as notarial seal).  If the verification is notarized but does not include the notarial seal, the examining attorney must require a substitute affidavit or declaration under 37 C.F.R. §2.20.  TMEP Section 804.01(a).  The “Declaration of Robert S. Macwright” submitted in support of the claim of acquired distinctiveness of the mark does not include a notarial seal.  Thus, a substitute affidavit or declaration conforming to 37 C.F.R. §2.20 is required.

 

When a Declaration under Rule 2.20 is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document. In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom.  Thus, a declaration under 37 C.F.R. §2.20 should read as follows:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

The Declaration of Robert S. Macwright” submitted in support of the claim of acquired distinctiveness of the mark includes the statement that “willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001),”but fails to include the mandatory statement that “all statements made of his own knowledge are true and all statements made on information and belief are believed to be true,” and also fails to include the mandatory language that willful false statements “may jeopardize the validity of the application (or document) or any registration resulting therefrom.”  

 

Hence, for the above reasons, the amendment to claim acquired distinctiveness is not presently acceptable, and the refusal of registration pursuant to Section 2(e)(2) of the Trademark Act is CONTINUED.

 

Section 2(d) Refusal of Registration is CONTINUED

 

Also CONTINUED for each of the reasons set forth in the first Office Action is the refusal of registration, pursuant to Section 2(d) of the Trademark Act, in view of prior U.S. Registration No. 2275510.  In response to the Section 2(d) refusal of registration, the applicant has asserted that “the owner of the cited Registration is a related company of Applicant. In addition, Applicant notes that the cited Registrant has consented to Applicant's use and registration of the mark UNIVERSITY OF VIRGINIA PATENT FOUNDATION.”  It is noted, however, that the applicant has provided no explanation of any kind as to the nature of the “relationship” between the applicant and the owner of the cited registration such that a Wella type exception to the prohibitions of Section 2(d) may be allowed.  Nor has the applicant provided any written, acceptable and valid consent (i.e., something more than a “naked consent”) from the owner of the cited registration to the registration by the applicant of the subject mark for the services identified in this application.

 

Accordingly, for each of the reasons set forth in the first Office Action, all of which are incorporated by reference here, the refusal of registration, pursuant to Section 2(d) of the Trademark Act, in view of prior U.S. Registration No. 2275510 is CONTINUED.

 

Requirement for Disclaimer of PATENT FOUNDATION is CONTINUED

 

Also CONTINUED is the requirement that the applicant disclaim the terms PATENT FOUNDATION, apart from the mark as a whole. 

 

A mark or separable elements of a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996);  In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991).  Moreover, as noted by the Trademark Trial and Appeal Board in In re Hester Industries, Inc., 230 USPQ 97, n.5 (TTAB 1986):

 

It is perfectly acceptable to separate a compound mark and discuss the implications of each part thereof with respect to the question of descriptiveness provided that the       ultimate determination is made on the basis of the mark in its entirety. An Examining Attorney's discussion of each word separately in order to show that the term in its entirety is descriptive is not the same thing as dissecting a mark.

 

The examiner does not agree with the applicant that the combined terms PATENT FOUNDATION when used in association with the identified services creates a unique and unitary composite with a separate, nondescriptive meaning such that disclaimer of these highly descriptive terms, apart from the mark as a whole, is not proper or warranted.  To the contrary, and as the applicant was advised in the first Office Action, if terms in a mark are highly descriptive or generic as applied to the identified goods and/or services, and are not part of a “unitary” whole, the highly descriptive or generic terms must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register.  Although the examiner withdraws the finding of a possibly misdescriptive nature of the terms PATENT FOUNDATION within the meaning of Section 2(e)(1) of the Trademark Act, the examiner maintains the finding that the terms PATENT FOUNDATION are at least highly descriptive of, if not generic for, the services is association with which registration of the subject mark is sought.  Accordingly, the requirement that the terms PATENT FOUNDATION be disclaimed, as they appear together in the mark, apart from the mark as a whole is CONTINUED.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Barbara Loughran/

Trademark Examining Attorney

Law Office 113

(571) 272-9189

email: Barbara.Loughran@uspto.gov

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.