UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 10/24/2012

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

 

SUMMARY OF ISSUES that applicant must address:

 

• REFUSAL – 2(e)(1) Merely Descriptive
•  Amendment to Supplemental Register Suggested
• Amendment Required of the Identification of Services in International Class  041

 

 

 

1.     REFUSAL – 2(e)(1) Merely Descriptive

 

Registration is refused because the applied-for standard character mark, EABOK merely describes the subject matter of applicant’s services, under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s  services.  TMEP §1209.01(b); see 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, 1009-10 (Fed. Cir. 1987). 

 

 

 

The applied-for mark, EABOK is used with education services, namely, providing a guide to knowledge content in the field of enterprise architecture, in International Class 041.

 

 

 

EABOK is an acronym for Enterprise Architecture Body of Knowledge.  See Exhibit 1    Enterprise Architecture is a design or blueprint of a business that depicts the components of a firm employed in its operations, interrelationships of those components , information flows, and how each component supports the objectives or the strategy of the enterprise.  See definition – Exhibit 2    Body of Knowledge (BOK) is an alternative for corpus, which describes a collection of all the available knowledge on a topic, or all the published material on a subject.  See definitions – Exhibits 2a and 2b   

 

 

 

An  acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

 

A mark consisting of an  acronym will be considered substantially synonymous with descriptive wording if:

 

(1)    the applied-for mark is an acronym for specific wording;

 

(2)    the specific wording is merely descriptive of applicant’s services; and

 

(3) a relevant consumer viewing the acronym in connection with applicant’s services will recognize it as the equivalent of the merely descriptive wording it represents.

 

See In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).

 

 

 Lastly, a relevant consumer viewing applicant’s mark in connection with the identified  services would recognize it as the equivalent of the descriptive wording it represents because applicant’s   specimen consisting of pages from its website, provided in the record states:

            “ABSTRACT

The Guide to the Enterprise Architecture Body of Knowledge (EABOK) organizes and characterizes the knowledge content of the Enterprise Architecture (EA) discipline….The EABOK subdivides EA into knowledge areas and topics within each area, presents an overview on the topic, and provides the reader references for further information…. .”

See specimen in the record, page 1

 

For these reasons, applicant’s proposed mark, EABOK is descriptive of a feature, the subject matter of applicant’s services, and registration is refused on the Principal Register.   Although the Trademark Examining Attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  In the alternative, applicant should note the following:

 

2.     Amendment to Supplemental Register Suggested

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.  TMEP §816.04.

 

 

Requirement

If the Applicant chooses to respond to the refusal to register, the Applicant must also respond to the following requirement:

 

 

 

 

3.       Particular Wording Indefinite in the Identification of Services in International Class 041

 

The wording providing a guide to knowledge content in the field of enterprise architecture in the identification of services is indefinite and must be clarified because education services require the performance of an educational activity, e.g., providing instruction, mentoring, classes, seminars, or workshops, and providing a guide (printed material) is not providing an educational service.  See TMEP §1402.01.  The Applicant may adopt the suggested identification, if accurate.

 

 

International Class 035           Providing a website featuring business educational information, featuring a guide to knowledge content in the field of enterprise architecture

 

 

An applicant may amend an identification of services only 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 et seq.

 

 

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

 

 

 

If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below or email.

 

 

 

/Odessa Bibbins/

Odessa Bibbins

Attorney Advisor

Law Office 105

Odessa.Bibbins@USPTO.GOV

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 10/24/2012 FOR

SERIAL NO. 85668177

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 10/24/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.