| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88088278 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88088278/mark.png |
| LITERAL ELEMENT | LEARNING GRAPH |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Applicant is responding to the Office Action dated December 16, 2018. Descriptiveness Refusal The examining attorney raised a preliminary refusal to register the mark on the grounds that the mark merely describes a feature or characteristic of Applicant's goods and/or services. The examining attorney provided, in support of this objection, evidence that the word LEARNING appears in some of Applicant’s webpages, and a definition of the word GRAPH. The examining attorney asserts, in particular, that to the extent that the applicant's goods and services feature the use of, or are in the form of, GRAPHS or diagrams, the wording GRAPH merely describes the nature or a characteristic of the goods or services. In response, Applicant respectfully submits that the mark LEARNING GRAPH is not merely descriptive of the Applicant's goods and services, for at least the following reasons. Legal Principles The standard for determining whether a mark is merely descriptive is whether it simply describes “an ingredient, quality, characteristic, function, feature, purpose or use of an applicant’s goods or services.” The determination must be made in relation to the goods or services for which registration is sought, in the context in which the mark is used, and the possible significance that the mark would have, because of that context, to the average purchaser in the marketplace. The primary test for determining a mark’s descriptiveness is whether it immediately conveys to consumers nothing more than a feature, characteristic or the nature of Applicant’s goods, or whether consumers must use “imagination, thought or perception” to draw that conclusion. If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive. Moreover, a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable. The Trademark Trial and Appeal Board has made it clear that in order for a mark to be considered merely descriptive, the mark must describe the goods or services with “particularity.” While a merely descriptive term is not registrable, a suggestive term is registrable without proof of secondary meaning. Applicant’s Mark does not Describe Applicant’s Goods and Services with Particularity Applicant’s goods include computer software and computer program platforms for creating and conducting educational courses and seminars, for generating course and related instructional material for online use at all learning levels, for enabling payment, registration, self assessment, course administration, experience and student evaluations, user credentialing, tracking performance of users with respect to educational content, interactive communications and for training users on the use and operation of the foregoing, in class 9. Applicant’s services include educational services, namely, conducting online exhibitions and displays and interactive exhibits in the field of computer programming, and electronic learning programs and platforms; providing educational assessment services, namely, managing the credentials and performance of users with respect to educational content, in class 41. Applicant’s services also include computer services, namely, hosting online web facilities for others for organizing and conducting online gatherings and interactive discussions; computer services, namely, interactive hosting services which allow users to publish and share their own content and images online, including electronic learning programs and platforms, and content management programs and platforms; design and development of computer hardware and software for electronic learning programs and platforms, in class 42. Given the nature and scope of Applicant's goods and services, the mark LEARNING GRAPH cannot be said to describe Applicant's goods and services with any degree of particularity. Applicant’s Mark is an Incongruous Combination of Terms Applicant submits that the examining attorney has dissected the mark into its component terms, instead of viewing the mark as a whole, as is required. LEARNING GRAPH is not a term found in the dictionary, or in any of the evidence provided by the examining attorney. Rather, LEARNING GRAPH is an original expression coined by Applicant, which would not be readily understood by consumers in the context of Applicant's goods and services. Applicant’s mark is incongruous, as a graph itself and does not do any learning. Furthermore, upon being faced with the mark LEARNING GRAPH, a prospective consumer would have to pause and engage in a multistage reasoning process in order to ascertain the true nature or function of Applicant's goods and services. This sort of mental process is the essence of suggestiveness. Applicant’s Mark is Suggestive of Connecting Learning Experiences Applicant’s goods and services do not feature the use of and are not in the form of graphs or diagrams, as asserted by the examining attorney. The term GRAPH as used by Applicant is not meant to refer to a literal graph, but rather, it is meant to be suggestive of connecting learning experiences throughout someone's lifetime. The case law makes it clear that suggestive marks are registrable, without proof of secondary meaning. Competitors Do Not Need to Use the Mark to Describe their Goods or Services Applicant's mark is suggestive, and not merely descriptive, because competitors do not need to use LEARNING GRAPH to describe their goods or services. Applicant notes that the examining attorney has not provided any evidence of third-party use of the term LEARNING GRAPH. Conclusion In conclusion, Applicant submits that LEARNING GRAPH is a unique combination of terms, resulting in a unitary mark, that creates a commercial impression which, when used in association with Applicant's goods and services, is not merely descriptive, but rather, is at most only suggestive of the associated goods and services, and is therefore registrable. Applicant therefore respectfully requests that the examining attorney withdraw the descriptiveness refusal, and advance this application towards registration. Requirement for Foreign Registration In response to the requirement to provide a true copy of the Applicant's corresponding foreign registration, Applicant advises that its corresponding Canadian application has not been examined, so it will be some time yet before it issues to registration. Applicant therefore requests that further prosecution of this application be suspended, pending the disposition of its Canadian application. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /TJS/ |
| SIGNATORY'S NAME | Timothy J. Sinnott |
| SIGNATORY'S POSITION | Partner |
| SIGNATORY'S PHONE NUMBER | 1-519-783-3212 |
| DATE SIGNED | 06/14/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 14 10:23:16 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190614102316238553-88088 278-620d964cf1594141ec3fc 6fa8df324b9e79d6e8971543c 5bd7e92d5f671e1dad1-N/A-N /A-20190614095400151493 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant is responding to the Office Action dated December 16, 2018.
Descriptiveness Refusal
The examining attorney raised a preliminary refusal to register the mark on the grounds that the mark merely describes a feature or characteristic of Applicant's goods and/or services. The examining attorney provided, in support of this objection, evidence that the word LEARNING appears in some of Applicant’s webpages, and a definition of the word GRAPH. The examining attorney asserts, in particular, that to the extent that the applicant's goods and services feature the use of, or are in the form of, GRAPHS or diagrams, the wording GRAPH merely describes the nature or a characteristic of the goods or services.
In response, Applicant respectfully submits that the mark LEARNING GRAPH is not merely descriptive of the Applicant's goods and services, for at least the following reasons.
Legal Principles
The standard for determining whether a mark is merely descriptive is whether it simply describes “an ingredient, quality, characteristic, function, feature, purpose or use of an applicant’s goods or services.” The determination must be made in relation to the goods or services for which registration is sought, in the context in which the mark is used, and the possible significance that the mark would have, because of that context, to the average purchaser in the marketplace.
The primary test for determining a mark’s descriptiveness is whether it immediately conveys to consumers nothing more than a feature, characteristic or the nature of Applicant’s goods, or whether consumers must use “imagination, thought or perception” to draw that conclusion. If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive. Moreover, a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable. The Trademark Trial and Appeal Board has made it clear that in order for a mark to be considered merely descriptive, the mark must describe the goods or services with “particularity.”
While a merely descriptive term is not registrable, a suggestive term is registrable without proof of secondary meaning.
Applicant’s Mark does not Describe Applicant’s Goods and Services with Particularity
Applicant’s goods include computer software and computer program platforms for creating and conducting educational courses and seminars, for generating course and related instructional material for online use at all learning levels, for enabling payment, registration, self assessment, course administration, experience and student evaluations, user credentialing, tracking performance of users with respect to educational content, interactive communications and for training users on the use and operation of the foregoing, in class 9. Applicant’s services include educational services, namely, conducting online exhibitions and displays and interactive exhibits in the field of computer programming, and electronic learning programs and platforms; providing educational assessment services, namely, managing the credentials and performance of users with respect to educational content, in class 41. Applicant’s services also include computer services, namely, hosting online web facilities for others for organizing and conducting online gatherings and interactive discussions; computer services, namely, interactive hosting services which allow users to publish and share their own content and images online, including electronic learning programs and platforms, and content management programs and platforms; design and development of computer hardware and software for electronic learning programs and platforms, in class 42.
Given the nature and scope of Applicant's goods and services, the mark LEARNING GRAPH cannot be said to describe Applicant's goods and services with any degree of particularity.
Applicant’s Mark is an Incongruous Combination of Terms
Applicant submits that the examining attorney has dissected the mark into its component terms, instead of viewing the mark as a whole, as is required. LEARNING GRAPH is not a term found in the dictionary, or in any of the evidence provided by the examining attorney. Rather, LEARNING GRAPH is an original expression coined by Applicant, which would not be readily understood by consumers in the context of Applicant's goods and services. Applicant’s mark is incongruous, as a graph itself and does not do any learning.
Furthermore, upon being faced with the mark LEARNING GRAPH, a prospective consumer would have to pause and engage in a multistage reasoning process in order to ascertain the true nature or function of Applicant's goods and services. This sort of mental process is the essence of suggestiveness.
Applicant’s Mark is Suggestive of Connecting Learning Experiences
Applicant’s goods and services do not feature the use of and are not in the form of graphs or diagrams, as asserted by the examining attorney. The term GRAPH as used by Applicant is not meant to refer to a literal graph, but rather, it is meant to be suggestive of connecting learning experiences throughout someone's lifetime. The case law makes it clear that suggestive marks are registrable, without proof of secondary meaning.
Competitors Do Not Need to Use the Mark to Describe their Goods or Services
Applicant's mark is suggestive, and not merely descriptive, because competitors do not need to use LEARNING GRAPH to describe their goods or services. Applicant notes that the examining attorney has not provided any evidence of third-party use of the term LEARNING GRAPH.
Conclusion
In conclusion, Applicant submits that LEARNING GRAPH is a unique combination of terms, resulting in a unitary mark, that creates a commercial impression which, when used in association with Applicant's goods and services, is not merely descriptive, but rather, is at most only suggestive of the associated goods and services, and is therefore registrable. Applicant therefore respectfully requests that the examining attorney withdraw the descriptiveness refusal, and advance this application towards registration.
Requirement for Foreign Registration
In response to the requirement to provide a true copy of the Applicant's corresponding foreign registration, Applicant advises that its corresponding Canadian application has not been examined, so it will be some time yet before it issues to registration. Applicant therefore requests that further prosecution of this application be suspended, pending the disposition of its Canadian application.