To: | University of Southern California (etanezaki@stetinalaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88269694 - AMERICAN MUSLIM CIVIC LEADERSHIP - USCGC-086T |
Sent: | 4/6/2019 9:39:39 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88269694
MARK: AMERICAN MUSLIM CIVIC LEADERSHIP
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: University of Southern California
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/6/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search
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).
Proposed Mark is Descriptive
The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. The proposed mark is “AMERICAN MUSLIM CIVIC LEADERSHIP INSTITUTE” for educational services, namely, providing classes, courses and seminars at the adult education and professional levels.
The proposed mark consists of the terms “American,” “Muslim, “Civic,” “Leadership” and “Institute.” “American” is defined as of or relating to the United States of America or its inhabitants.[1] “Muslim” is defined as of or relating to the religion, law, or civilization of Islam.[2] “Civic” is defined as of or relating to citizenship; civil.[3] “Leadership” is defined as an act or instance of leading; guidance; direction.[4] An “institute” is defined as an institution, generally beyond the secondary school level, devoted to instruction in technical subjects, usually separate but sometimes organized as a part of a university.[5] Taken as a whole the proposed mark can be interpreted as an institute of instruction in the field of leading or directing the civil direction of those following the religion of Islam in America. This is merely descriptive of the identified educational services. 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, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
A Lexis/Nexis search illustrates the descriptive nature of the proposed mark. A search of U.S. news articles for the term “American Muslim” within five terms of “civic” or “leadership” or “institute” found over two hundred stories. Articles found within this search illustrate the descriptive nature of the term as applied to the identified services (See attached for examples).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the applicant’s classes are for civic leaders on American Muslim people. Based on the above, the mark cannot be registered on the Principal Register.
Option – Acquired Distinctiveness
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
“Muslim” is defined as of or relating to the religion, law, or civilization of Islam.[6] “Civic” is defined as of or relating to citizenship; civil.[7] “Leadership” is defined as an act or instance of leading; guidance; direction.[8] An “institute” is defined as an institution, generally beyond the secondary school level, devoted to instruction in technical subjects, usually separate but sometimes organized as a part of a university.[9] Taken as a whole the proposed mark can be interpreted as an institute of instruction in the field of leading or directing the civil direction of those following the religion of Islam.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “MUSLIM CIVIC LEADERSHIP INSTITUTE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Other Considerations
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, the following issue must also be addressed.
The Recitation of Services is Indefinite
Some of the wording used as the recitation of services is unacceptable as indefinite. It is unclear from the current wording exactly what services are used in conjunction with the mark. For example, the field of the educational services must be specified, e.g. “in the field of leadership and civic engagement.”
Applicant may adopt the following identification of services, if accurate (suggested wording appears in italicized print):
Educational services, namely, providing classes, courses and seminars at the adult continuing education and for professionals in the field of _____ (indicate specific subject, e.g. leadership and civic engagement) in Class 41. See TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
If applicant has questions regarding this Office action, please call or email the assigned trademark examining attorney. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Jason F. Turner/
Examining Attorney
Law Office 108
(571) 272-9353
jason.turner@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.
[1] American. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/american (accessed: April 6, 2019).
[2] Muslim. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/muslim (accessed: April 6, 2019).
[3] Civic. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/civic (accessed: April 6, 2019).
[4] leadership. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/leadership (accessed: April 6, 2019).
[5] institute. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/institute (accessed: April 6, 2019).
[6] Muslim. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/muslim (accessed: April 6, 2019).
[7] Civic. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/civic (accessed: April 6, 2019).
[8] leadership. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/leadership (accessed: April 6, 2019).
[9] institute. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/institute (accessed: April 6, 2019).