Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88411406 TRUHLSEN-MARMOR MUSEUM OF THE EYE(Standard Characters, see http://uspto.report/TM/88411406/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant hereby responds to the Examining Attorney's July 19, 2019 Office Action. 

First, Applicant respectfully requests amendment of its description of services to the following (additions in bold font; deletions crossed out):

Class 41:  Museum services; Educational services, namely, conducting educational meetings, lectures, seminars, conferences, workshops, exhibits, and symposia in the fields of eye care, vision, ophthalmology, and science, and distribution of providing related written and prerecorded educational course material in connection together therewith; Providing a website featuring educational information and non-downloadable videos in the academic fields of eye care, vision, ophthalmology, and science for the purpose of academic study and providing a website featuring online non-downloadable instructional videos in the fields of eye care, vision, ophthalmology, and science; Providing educational information in the academic fields of eye care, vision, ophthalmology, and science

Second, Applicant respectfully disagrees that a disclaimer is required for the wording MUSEUM OF THE EYE.  The wording is unitary in nature and conveys a distinctive commercial impression apart from the individual terms.  For example, when spoken the mark could be perceived as a double entendre.  In one sense, it could convey the impression of an institution focused on the individual ("I") and, in the other sense, it could convey the impression of an institution focused on anatomy, eyecare, or vision ("EYE").  Thus, no disclaimer of the wording is required.  

Applicant believes it has addressed all issues raised in the office action and respectfully requests a notice of publication. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Museum services; Educational services, namely, conducting meetings, lectures, seminars, conferences, workshops, exhibits, and symposia in the fields of eye care, vision, ophthalmology, and science, and providing related written and prerecorded educational course material together therewith; Providing a website featuring educational information and non-downloadable videos in the fields of eye care, vision, ophthalmology, and science; Providing educational information in the fields of eye care, vision, ophthalmology, and science
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Museum services; Educational services, namely, conducting meetings, lectures, seminars, conferences, workshops, exhibits, and symposia in the fields of eye care, vision, ophthalmology, and science, and providing related written and prerecorded educational course material together therewith; Educational services, namely, conducting educational meetings, lectures, seminars, conferences, workshops, exhibits, and symposia in the fields of eye care, vision, ophthalmology, and science, and distribution of course material in connection therewith; Providing a website featuring educational information and non-downloadable videos in the fields of eye care, vision, ophthalmology, and science; Providing a website featuring educational information in the academic fields of eye care, vision, ophthalmology, and science for the purpose of academic study and providing a website featuring online non-downloadable instructional videos in the fields of eye care, vision, ophthalmology, and science; Providing educational information in the fields of eye care, vision, ophthalmology, and science; Providing educational information in the academic fields of eye care, vision, ophthalmology, and scienceClass 041 for Museum services; Educational services, namely, conducting educational meetings, lectures, seminars, conferences, workshops, exhibits, and symposia in the fields of eye care, vision, ophthalmology, and science, and distribution of course material in connection therewith; Providing a website featuring educational information in the academic fields of eye care, vision, ophthalmology, and science for the purpose of academic study and providing a website featuring online non-downloadable instructional videos in the fields of eye care, vision, ophthalmology, and science; Providing educational information in the academic fields of eye care, vision, ophthalmology, and science
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Elizabeth C. Buckingham. Elizabeth C. Buckingham of DORSEY & WHITNEY LLP, is located at

      SUITE 1500
      50 SOUTH SIXTH STREET
      MINNEAPOLIS, Minnesota 55402-1498
      US
The docket/reference number is T282064.US.1.

The phone number is 612-343-2178.

The fax number is 612-340-8827.

The email address is ip.docket@dorsey.com

The applicants proposed attorney information: Elizabeth C. Buckingham. Other appointed attorneys are Stuart R. Hemphill, Jamie N. Nafziger, Jeffrey R. Cadwell, Cathleen F. Dahl, Evan P. Everist, and Alison W. Jarzyna. Elizabeth C. Buckingham of DORSEY & WHITNEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 1500
      50 SOUTH SIXTH STREET
      MINNEAPOLIS, Minnesota 55402-1498
      United States
The docket/reference number is T282064.US.1.

The phone number is 612-343-2178.

The fax number is 612-340-8827.

The email address is ip.docket@dorsey.com

Elizabeth C. Buckingham submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ELIZABETH C. BUCKINGHAM. ELIZABETH C. BUCKINGHAM of DORSEY & WHITNEY LLP, is located at

      SUITE 1500
      50 SOUTH SIXTH STREET
      MINNEAPOLIS, Minnesota 55402-1498
      US
The docket/reference number is T282064.US.1.

The phone number is 612-343-2178.

The fax number is 612-340-8827.

The email address is ip.docket@dorsey.com; buckingham.elizabeth@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com

The applicants proposed correspondence information: Elizabeth C. Buckingham. Elizabeth C. Buckingham of DORSEY & WHITNEY LLP, is located at

      SUITE 1500
      50 SOUTH SIXTH STREET
      MINNEAPOLIS, Minnesota 55402-1498
      United States
The docket/reference number is T282064.US.1.

The phone number is 612-343-2178.

The fax number is 612-340-8827.

The email address is ip.docket@dorsey.com; buckingham.elizabeth@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com

SIGNATURE(S)
Response Signature
Signature: /Elizabeth C. Buckingham/     Date: 01/14/2020
Signatory's Name: Elizabeth C. Buckingham
Signatory's Position: Attorney of Record, Minnesota Bar Member

Signatory's Phone Number: 612-343-2178

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ELIZABETH C. BUCKINGHAM
   DORSEY & WHITNEY LLP
   SUITE 1500
   50 SOUTH SIXTH STREET
   MINNEAPOLIS, Minnesota 55402-1498
Mailing Address:    Elizabeth C. Buckingham
   DORSEY & WHITNEY LLP
   SUITE 1500
   50 SOUTH SIXTH STREET
   MINNEAPOLIS, Minnesota 55402-1498
        
Serial Number: 88411406
Internet Transmission Date: Fri Jan 17 18:53:56 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XXX-2020011718535602
5143-88411406-700eafb8cc4284cb98d958c753
c76ab950bc4c9d97fcaf79321dbd7d1ac427d398
-N/A-N/A-20200110175158047745