| 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 | 88208716 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88208716/mark.png |
| LITERAL ELEMENT | GREAT LAKES BREWING CO HOP COLLEGE EST. 2018 |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This is responsive to the Office Action mailed January 14, 2019. Applicant notes with appreciation that the Examining
Attorney’s search of the US Patent and Trademark Office records did not locate any registrations or pending applications that would obstruct registration of the mark.
The Examining Attorney has required that Applicant enter disclaimers to certain wording contained in the overall mark. Applicant respectfully traverses the disclaimer requirement and requests that
the Examining Attorney reconsider and withdraw same. Pursuant to TMEP 1213.01(a), Examining Attorneys have discretion in requiring disclaimers. There it is also stated: The examining attorney must not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite. Id. Applicant submits that the wording contained in the overall composite mark is so integrated with the mark as part of the overall crest and ribbon that no
disclaimer should be required. Several elements contained in the mark already stand on their own as trademarks and, hence, a disclaimer would be improper. For example, applicant owns Reg.
No. 1666893 for the mark GREAT LAKES registered on the Principal Register. Applicant also owns numerous other registrations for marks that likewise contain GREAT LAKES such that GREAT LAKES is not
disclaimed. Therefore, the presently applied for mark should be handled the same way and the requirement to disclaimer GREAT LAKES should be withdrawn. HOP COLLEGE likewise stands on its own as a trademark. The phrase is not descriptive of Applicant’s services, and no disclaimer should be required. In this
regard, HOP COLLEGE is arbitrary and comprises an incongruous word combination with respect to Applicant’s services. When HOP is combined with COLLEGE, the two words
are incongruous and fanciful on their face and are not merely descriptive and should not be disclaimed. The definitions of COLLEGE and HOP listed in the refusal
do not mention any association between the two terms, nor any sort of connection that is readily understood by consumers. Furthermore, seminars and workshops in the
fields of beer and beer production are not a known type of learning institution. Beer production on one hand, and institutions of higher learning on the other hand,
are two different concepts that are not associated in the public mind. Unlike a traditional college, no formal “degree” or other certification is earned in connection
with learning about beer production such as one would find in a typical college or institution of higher learning. Nor can one secure transferable credits in the beer
making process if they attend the seminars of higher learning under the HOP COLLEGE mark. Applicant’s services cannot be applied toward such a college degree or
certification. Moreover, a consumer would not attend Applicant’s HOP COLLEGE educational services to seek a degree or course credits because such do not
exist. Indeed, attendance at the educational seminar results in a special pint of beer and, after attending three classes, the award is a t-shirt along with a
discount on brewpub food orders or gift shop purchases. See the attached pages from Applicant’s website. Thus, a consumer of
Applicant’s beer classes might attend Applicant’s educational services to have fun, earn some beer, and possibly a shirt. A “hop” is defined as a twining vine having lobed leaves and green female flowers arranged in conelike spikes. This
definition was attached to the back of the Office Action. This definition suggests that Applicant’s educational services are botany related and not beer
related. The plural form of hop, namely, hops, is defined as the dried female inflorescences of the plant and containing a bitter aromatic oil. HOP COLLEGE (the singular form of hop) merely suggests (but does not describe) the nature of the services and as a result should not be disclaimed. HOP COLLEGE is also a double
entendre because the attendees of Applicant’s services might have a positive or uplifting (fun) experience attending the seminars, as “HOP” brings to mind positive experiences such as jumping
(e.g., like a rabbit or kangaroo) or dancing (e.g., the “bunny hop” or a “sock hop”) or ways to increase one’s power or
energy. HOP COLLEGE also suggests hurrying to class (i.e., “hop quickly!). Thus, the classes are not focused on the botanical hop
flower or the female inflorescence of the plant. Nor are they focused on a dancing class or jumping in class or hurrying to class. Rather, the seminars are focused on
the beer process in general and any suggestive relationship to applicant’s services is remote at best. Furthermore, “HOP COLLEGE” is not used as a single phrase in common parlance. There is no reason to infer that consumers would be headed to a beer seminar and
accidentally call it HOP COLLEGE unless HOP COLLEGE were the brand of the seminar, which it is in this case. If third parties want to have a beer seminar, they can simply call it “beer making
seminar,” “beer education,” or the like. There is no competitive need for third parties to use HOP COLLEGE in association with beer seminar services. Applicant submits that HOP COLLEGE is arbitrary term with respect to Applicant’s services and should not be disclaimed. The Examining Attorney also required disclaimers of BREWING CO. and EST. 2018. Neither of these phrases inform the consumer that the associated services are
associated with “Educational services, namely, conducting classes, seminars and workshops in the fields of beer and beer production, and distribution of training materials in connection therewith.”
These terms are arbitrary with respect to the services and it is requested that the Examining Attorney reconsider and withdraw the associated disclaimer requirements. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\882\087\88208716\xml5\ ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT 17\882\087\88208716\xml5\ ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | pages from Applicant's website |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /sandramkoenig/ |
| SIGNATORY'S NAME | Sandra M. Koenig |
| SIGNATORY'S POSITION | Attorney of record, Ohio bar member |
| SIGNATORY'S PHONE NUMBER | 216-363-9137 |
| DATE SIGNED | 07/15/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 15 11:18:53 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190715111853183173-88208 716-620e2eedbeb738112a633 32999044b9fc4d616dce516e5 649f08d27151581891e-N/A-N /A-20190715110824098262 |
| 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) |
This is responsive to the Office Action mailed January 14, 2019. Applicant notes with appreciation that the Examining
Attorney’s search of the US Patent and Trademark Office records did not locate any registrations or pending applications that would obstruct registration of the mark.
The Examining Attorney has required that Applicant enter disclaimers to certain wording contained in the overall mark. Applicant respectfully traverses the disclaimer requirement and requests that
the Examining Attorney reconsider and withdraw same.
Pursuant to TMEP 1213.01(a), Examining Attorneys have discretion in requiring disclaimers. There it is also stated:
The examining attorney must not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.
Id.
Applicant submits that the wording contained in the overall composite mark is so integrated with the mark as part of the overall crest and ribbon that no
disclaimer should be required.
Several elements contained in the mark already stand on their own as trademarks and, hence, a disclaimer would be improper. For example, applicant owns Reg.
No. 1666893 for the mark GREAT LAKES registered on the Principal Register. Applicant also owns numerous other registrations for marks that likewise contain GREAT LAKES such that GREAT LAKES is not
disclaimed. Therefore, the presently applied for mark should be handled the same way and the requirement to disclaimer GREAT LAKES should be withdrawn.
HOP COLLEGE likewise stands on its own as a trademark. The phrase is not descriptive of Applicant’s services, and no disclaimer should be required. In this
regard, HOP COLLEGE is arbitrary and comprises an incongruous word combination with respect to Applicant’s services. When HOP is combined with COLLEGE, the two words
are incongruous and fanciful on their face and are not merely descriptive and should not be disclaimed. The definitions of COLLEGE and HOP listed in the refusal
do not mention any association between the two terms, nor any sort of connection that is readily understood by consumers. Furthermore, seminars and workshops in the
fields of beer and beer production are not a known type of learning institution. Beer production on one hand, and institutions of higher learning on the other hand,
are two different concepts that are not associated in the public mind. Unlike a traditional college, no formal “degree” or other certification is earned in connection
with learning about beer production such as one would find in a typical college or institution of higher learning. Nor can one secure transferable credits in the beer
making process if they attend the seminars of higher learning under the HOP COLLEGE mark. Applicant’s services cannot be applied toward such a college degree or
certification. Moreover, a consumer would not attend Applicant’s HOP COLLEGE educational services to seek a degree or course credits because such do not
exist. Indeed, attendance at the educational seminar results in a special pint of beer and, after attending three classes, the award is a t-shirt along with a
discount on brewpub food orders or gift shop purchases. See the attached pages from Applicant’s website. Thus, a consumer of
Applicant’s beer classes might attend Applicant’s educational services to have fun, earn some beer, and possibly a shirt.
A “hop” is defined as a twining vine having lobed leaves and green female flowers arranged in conelike spikes. This
definition was attached to the back of the Office Action. This definition suggests that Applicant’s educational services are botany related and not beer
related. The plural form of hop, namely, hops, is defined as the dried female inflorescences of the plant and containing a bitter aromatic oil. HOP COLLEGE (the singular form of hop) merely suggests (but does not describe) the nature of the services and as a result should not be disclaimed. HOP COLLEGE is also a double
entendre because the attendees of Applicant’s services might have a positive or uplifting (fun) experience attending the seminars, as “HOP” brings to mind positive experiences such as jumping
(e.g., like a rabbit or kangaroo) or dancing (e.g., the “bunny hop” or a “sock hop”) or ways to increase one’s power or
energy. HOP COLLEGE also suggests hurrying to class (i.e., “hop quickly!). Thus, the classes are not focused on the botanical hop
flower or the female inflorescence of the plant. Nor are they focused on a dancing class or jumping in class or hurrying to class. Rather, the seminars are focused on
the beer process in general and any suggestive relationship to applicant’s services is remote at best.
Furthermore, “HOP COLLEGE” is not used as a single phrase in common parlance. There is no reason to infer that consumers would be headed to a beer seminar and
accidentally call it HOP COLLEGE unless HOP COLLEGE were the brand of the seminar, which it is in this case. If third parties want to have a beer seminar, they can simply call it “beer making
seminar,” “beer education,” or the like. There is no competitive need for third parties to use HOP COLLEGE in association with beer seminar services.
Applicant submits that HOP COLLEGE is arbitrary term with respect to Applicant’s services and should not be disclaimed.
The Examining Attorney also required disclaimers of BREWING CO. and EST. 2018. Neither of these phrases inform the consumer that the associated services are
associated with “Educational services, namely, conducting classes, seminars and workshops in the fields of beer and beer production, and distribution of training materials in connection therewith.”
These terms are arbitrary with respect to the services and it is requested that the Examining Attorney reconsider and withdraw the associated disclaimer requirements.
