| To: | City University of Hong Kong (ipdocket@mayerbrown.com) |
| Subject: | U.S. Trademark Application Serial No. 88452692 - CITYU HONG KONG INSTITUTE FOR DATA - N/A |
| Sent: | August 21, 2019 07:50:41 PM |
| Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88452692
Mark: CITYU HONG KONG INSTITUTE FOR DATA
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Correspondence Address:
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Applicant: City University of Hong Kong
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 21, 2019
The assigned examining attorney has reviewed the referenced application and determines as follows:
No Conflicting Marks
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Summary of Issues Below:
(1) Additional disclaimer required for geographic wording and transliterated wording
(2) Amend the mark description
(3) Amend the color claim
(4) Amend the identification of goods/services
(5) Dual filing bases; foreign registration required
Additional Disclaimer Required
The applicant has provided a voluntary disclaimer of the wording “Hong Kong Institute for Data Science”, which is acceptable. Please note that an additional disclaimer of “City U” as well as all wording must also be entered. In particular, a disclaimer of “City University of Hong Kong” and the transliterated wording that means “City University of Hong Kong”.
In addition to the voluntary disclaimer of the descriptive wording “Hong Kong Institute for Data Science”, the applicant must also provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim “City U” and “City University of Hong Kong” and the transliterated wording “City University of Hong Kong” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Please note that the voluntary disclaimer of “Hong Kong Institute for Data Science” is acceptable. Please note that an additional disclaimer of “City U” as well as all wording must also be entered. In particular, a disclaimer of “City University of Hong Kong” and the transliterated wording that means “City University of Hong Kong” must be disclaimed.
“City” is defined as “A center of population, commerce, and culture; a town of significant size and importance.” Please see the American Heritage Dictionary definition. “U” is an abbreviation for “University”. Please see Acronymfinder.com, which identifies “U” as a recognized abbreviation for the term. Additionally, please see the attached websites that demonstrate third-party usage of the term “City U” for the provision of universities. By way of example, please see the University of Seattle and the University of Canada”, both referred to as “City U”. The proposed wording merely describes a university in the city, which is likely provided in connection with educational services such as those claimed in class 041 and the scientific and technological services and related services claimed in class 042.
“University” is defined as “An institution for higher learning with teaching and research facilities typically including a graduate school and professional schools that award master's degrees and doctorates and an undergraduate division that awards bachelor's degrees.” Please see the American Heritage Dictionary definition. “Hong Kong” is defined as “A city and administrative region of southeast China on the coast southeast of Guangzhou, including Hong Kong Island and adjacent areas. Hong Kong Island was occupied by the British during the Opium War (1839-1842) and ceded to them by the Treaty of Nanking (1842). Other portions of the colony were acquired in 1860 and in 1898 by a 99-year lease. Hong Kong reverted to Chinese sovereignty in 1997. It is a major port and a center of international commerce and banking.” Id.
The combined wording “City University of Hong” describes a university in the geographic area in the city of Hong Kong that offers educational services as those claimed in class 041 and the scientific and technological services and related services claimed in class 042. The same analysis applies to the transliterated wording that transliterates to “City University of Hong Kong”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “Hong Kong Institute for Data Science”, “City U”, “City University of Hong Kong” and the transliterated wording that means “City University of Hong Kong” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Amended Mark Description and Color Claim
The following description is suggested, if accurate: The mark consists of the words “CityU” in white inside a burgundy banner positioned to the left of the wording “Hong Kong Institute for Data Science” in burgundy above the black Chinese characters and the black wording “City University of Hong Kong”.
Amend the Color Claim
The following color claim is suggested, if accurate: “The colors white, burgundy, and black are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Identification of Goods/Services
Applicant’s description of goods/services is unacceptable because it is indefinite. §1402.1.
Class 041: Education; providing of training; university education services; academic educational services; education services relating to undergraduate, postgraduate and vocational education and training courses; college education; technical institutes education; instruction and training services; library services; arranging and conducting of conferences, seminars, workshops, conventions and exhibitions for cultural and educational purposes; career counselling; computer-based education services; arranging and conducting of educational courses, training workshops and practical training; design of educational courses, examinations and qualifications; arranging and conducting of educational examinations; examination and educational assessment services; postgraduate training services; courses relating to research and development; provision of correspondence courses; teaching and training services; providing facilities for educational and training purposes; business training provided through a simulation structure; advisory and information services in the fields of education and training provided on-line from a computer database or the Internet; professional consultancy services relating to education; publication of texts, books, periodicals, printed matter, photographs, magazines, instructional materials, teaching materials and educational materials; publication of educational articles in electronic form; on-line electronic publications (not downloadable); production of radio and television programmes; production of films, video tapes, video films, video compact disks and digital versatile disks; radio and television entertainment; organization of competition for educational and training purposes; entertainment; sporting and cultural activities; information, advisory and consultancy in relation to the aforesaid services
Class 042: Scientific and technological services and research and design relating thereto; industrial analysis and research services; research and development (for others); computer services relating to compiling and processing of computerized data; computerised analysis of scientific data; data decryption services; development of computer systems for processing of data; research relating to data processing; design and development of computer hardware and software; updating of computer software; engineering; hosting computer websites; creating and maintaining web sites for others; monitoring of computer systems by remote access; rental of computer software and web servers; surveying; technical research; scientific laboratory services; information, advisory and consultancy in relation to the aforesaid services
Applicant must clarify the identification of goods/services as follows: See TMEP §1402.01.
(1) specify the nature of the educational services, e.g., the mode of educational use such as tutoring, classes, seminars, workshops and the field of use
(2) Training is overly broad and will require clarification. Please provide the nature of the training.
(3) “library services” are overly broad. Please specify the nature of the library services, e.g., “lending, mobile”
(4) “career counseling” is overly broad and therefore indefinite. Please specify the nature of the career couseling.
(5) References to the mode of educational offerings, such as courses, examinations, and courses are unclear unless the field of use is identified. Please specify the field of use as indicated below.
(6) Publication of educational articles” are overly broad as the nature of the educational articles are not specified.
(7) Entertainment is overly broad and requires clarification. Please specify the nature of the entertainment as suggested below.
(8) Organization of competition is unclear, please clarify as suggested below.
(9) Sporting and cultural activities are overly broad and therefore indefinite. Please specify the nature of the activities.
(10)Scientific and technological services are overly broad and therefore indefinite. Please specify the nature of services, e.g., scientific research
(11)Research and design are not clear and therefore considered indefinite. Specify the field of use and/or the goods/services that will be researched or designed.
(12) Industrial analysis and research are not clear and therefore considered indefinite. Specify the field of use and/or the goods/services that will be researched or designed.
(13) “computerised analysis of scientific data” is unclear and therefore considered indefinite. Please clarify the services, e.g, providing the modified wording “computer systems analysis, namely”
(14) “design and development of computer hardware and software” is unclear and the field of use should be specified.
(15) “hosting computer websites” is indefinite as the goods are not specified “for others”
(16) “Monitoring of computer systems by remote access” are unclear can be clearer if the purpose of the computer monitoring is identified.
(17) “technical research” is overly broad because the area and/or subject matter has not been identified. Please specify the field of use.
(18) “computer services relating to compiling and processing of computerized data” are likely misclassified. Please note that “Compilation of computerized databases; processing of computerized data, namely computerized word processing” are properly classified in class 035.
Suggested Acceptable Identification Of Goods/Services
Applicant is encouraged to adopt the suggested language, if accurate.
Class 035: Compilation of computerized databases; processing of computerized data, namely computerized word processing
Class 041: Education services, namely providing {specify the mode of educational use, e.g.,
tutoring, classes, seminars, workshops in the field of {specify the field of use}; providing of training in the use of {indicate specific type of equipment, e.g. computers,
construction machinery}; university education services namely providing {specify the mode of educational use, e.g., tutoring, classes, seminars, workshops in the field of
{specify the field of use}; academic educational services namely providing {specify the mode of educational use, e.g., tutoring, classes, seminars, workshops in the field of
{specify the field of use}; education services relating to undergraduate, postgraduate and vocational education in the field of {specify the field of use} and training
courses in the use of {indicate specific type of equipment, e.g. computers, construction machinery}; college education, namely providing {specify the mode of
educational use, e.g., tutoring, classes, seminars, workshops in the field of {specify the field of use} or specify “educating at a college”; technical institutes education, namely providing {specify the mode of educational use, e.g., tutoring, classes, seminars, workshops in the field of {specify the field of use}; instruction and training services training
in the use of {indicate specific type of equipment, e.g. computers, construction machinery}; {lending, mobile} library services; arranging and conducting
of conferences, seminars, workshops, conventions and exhibitions in the field of {specify the field of use} for cultural and educational purposes; career counselling, namely, providing advice concerning education options to pursue career opportunities; computer-based education services; arranging and conducting of educational courses, training
workshops in the field of {specify the field of use} and practical training in the use of {indicate specific type of equipment, e.g. computers, construction
machinery}; design of educational courses, examinations and qualifications relating to the {specify the field of use/indicate the specific industry}; arranging and
conducting of educational examinations; examination and educational assessment services; postgraduate training services in the use of {indicate specific type of equipment, e.g.
computers, construction machinery}; educational courses relating to research and development in the field of {specify the field of use}; provision of
educational correspondence courses in the field of {specify the field of use}; teaching and training services in the use of {indicate
specific type of equipment, e.g. computers, construction machinery}; providing facilities for educational and training purposes, namely {specify the mode of educational service,
e.g., classes, seminars, workshops}; business training provided through a simulation structure; advisory and information services in the fields of education and
training in the field of {specify the field of use} provided on-line from a computer database or the Internet; professional consultancy services relating to education;
publication of texts, books, periodicals, printed matter, photographs, magazines, instructional materials, teaching materials and educational materials; publication of educational articles in the nature of {specify the educational article, e.g., books, manuals} in electronic form; on-line non-downloadable electronic publications (not
downloadable) in the nature of {specify the educational article, e.g., books, manuals}; production of radio and television programmes; production of films, video tapes,
video films, video compact disks and digital versatile disks in the field of {specify the field of use}; radio and television entertainment in the nature of
{specify the nature of the entertainment}; organization of competition in the field of {specify the field of use} for educational and training purposes; entertainment
in the nature of {specify the nature of the entertainment}; sporting and cultural activities in the nature of {specify the nature of the activities};
information, advisory and consultancy in relation to the aforesaid services
Class 042: Scientific and technological services, namely specify the nature of the scientific and technological services,
e.g., scientific research} and research and design relating thereto in the field of use and/or good/services to be designed}; industrial analysis and research services
in the field of {specify the field of use}; research and development for others of {specify the goods that will be researched and developed} (for
others); computer services relating to compiling and processing of computerized data; computer systems analysis, namely computerised
analysis of scientific data; data decryption services; development of computer systems for processing of data; research relating to data processing; design and development of computer hardware and
software in the field of {specify the field or subject matter}; updating of computer software; engineering services in the field of {specify the field of
use}; hosting computer websites of others; creating and maintaining web sites for others; monitoring of computer systems by remote access for the purposes
of {specify the purpose of the computer monitoring}; rental of computer software and web servers; surveying; technical research in the field of {specify the field of use};
scientific laboratory services; information, advisory and consultancy in relation to the aforesaid services
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035, 041, 042. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
Applicant Has Applied With A 1(b) and 44(d) Filing Basis
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
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.
How to respond. Click to file a response to this nonfinal Office action
/Nakia D. Henry/
Trademark Attorney (Law Office 117)
Phone: (571) 272-7208
Fax: (571) 273-7208
E-mail: nakia.henry@uspto.gov
RESPONSE GUIDANCE
