| To: | City University of Hong Kong (ipdocket@mayerbrown.com) |
| Subject: | U.S. Trademark Application Serial No. 88452692 - CITYU HONG KONG INSTITUTE FOR DATA - 19621100 |
| Sent: | March 25, 2020 02:23:33 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 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
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. 19621100
Correspondence Email Address: |
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FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 25, 2020
This final office action addresses the applicant’s 2/21/20 response to the 8/21/19 office action. Please note that the original office action required an additional disclaimer of geographic and transliterated wording and requirements to amend the mark description, color claim, identification of goods/services, and to provide a foreign registration. The applicant has satisfied all requirements, with the exception of the additional disclaimer and, while the applicant has attempted to amend the identification of goods/services, the amendment remains indefinite and unacceptable, in part. In regard to the additional disclaimer, the undersigned finds the arguments unpersuasive and the requirement is now made FINAL. In regard to the identification of goods/services, while the applicant has attempted to amend the identification, the identification remains indefinite and unacceptable and therefore the requirement is now made FINAL.
Summary of Issues Below:
(1) Additional disclaimer required for geographic wording and transliterated wording- FINAL
(2) Amend the mark description- satisfied
(3) Amend the color claim- satisfied
(4) Amend the identification of goods/services- FINAL
(5) Dual filing bases; foreign registration required- satisfied
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).
Applicant argues that City U does not require a disclaimer because it is suggestive and unitary. The undersigned had reviewed the arguments and finds the arguments unpersuasive based upon the rationale below.
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 previously provided American Heritage Dictionary definition. “U” is an abbreviation for “University”. Please see the previously provided Acronymfinder.com, which identifies “U” as a recognized abbreviation for the term. Additionally, please see the previously 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”. Additionally, please see the additional evidence that demonstrates that the University of Miami is often referred to as “The U”, “City U” refers to the City of Seattle, Illinois University is often referred to “U of I”. Please see the recently attached websites, captured 3/25/20. Moreover, please see attached third party registrations. In particular, applicant argues that U.S. Registration No. 4981027 did not require a disclaimer of City, but it is noted that this registration is allowed with a 2f statement, which indicates that the remainder of the wording is indeed descriptive. The same argument is relevant for U.S. Registration No. 5163819. Please see both attached.
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 previously provided 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.
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
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) Applicant has attempted to provide the field and/or subject matter as an educational level, e.g., undergraduate and post graduate. To ensure that the claimed services are clear and definite, the applicant must amend the recitation to reflect the wording “courses of instruction” instead of merely courses for clarity.
(2) “Providing academic performance evaluations” are unclear as the intended audience and mode of delivery are not identified.
(3) “Instruction” alone is unclear and therefore indefinite. The applicant may clarify the services by including the modifier, “educational services, namely” or “courses of instruction”
(4) “publication of instructional materials, teaching materials, and educational materials” is unclear and therefore indefinite. Please provide the common commercial names of the materials, e.g., books.
(5) Further, the “publication of educational articles” may be in a particular form, e.g., books, manuals and the subject matter/field should be specified.
(6) Additionally, “publications” and “versatile disks” must specify the field of use.
(7) “live performances” is overly broad and the type of live performance must be specified. Please see the id manual or select “live audio performance” and identify who performs the performance.
(8) “monitoring of computer systems by remote access for” must specify the use and/or purpose and “educational purposes” is too broad. The underlying use/purpose must be specified.
Suggested Acceptable Identification Of Goods/Services
Applicant is encouraged to adopt the suggested language, if accurate.
Class 041: Education, namely, education services in the nature of courses at the university level; providing of training in the field of university courses of instruction at the undergraduate, graduate and post-graduate levels; university education services, namely, providing courses at the university level; academic educational services, namely, providing academic performance evaluations for {indicate the intended audience and mode of delivery, e.g., children pre-kindergarten through grade 12 via the Internet}; education services relating to undergraduate, postgraduate and vocational education and training courses, namely, providing vocational training in the fields of science, engineering, social sciences, and business; educating at a college; technical institutes education, namely, providing technical training in the fields of science, engineering, social sciences, and business; Educational services, namely instruction and training services in the fields of science, engineering, social sciences, and business; lending and mobile library services; arranging and conducting of conferences, seminars, workshops, conventions and exhibitions for cultural and educational purposes in the fields of science, engineering, social sciences, and business; career counselling, namely, providing advice concerning education options to pursue career opportunities; computer-based education services, namely, conducting distance learning instruction at the university level; arranging and conducting of educational courses, training workshops and practical training in the fields of science, engineering, social sciences, and business; arranging and conducting of educational examinations; educational examination and educational assessment services; postgraduate training services, namely, conducting distance learning instruction at the university level; educational courses relating to research and development in the field of science, engineering, social sciences, and business; provision of correspondence courses at the university level; teaching and training services at the undergraduate, graduate and post-graduate level; providing facilities for educational and training purposes, namely conferences, seminars, workshops, conventions and exhibitions for cultural and educational purposes in the fields of science, engineering, social sciences, and business; business training provided through a simulation structure; advisory and information services in the fields of education and training in the fields of science, engineering, social sciences, and business 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, in the nature of {specify the common commercial names of the printed matter}, teaching materials and educational materials in the nature of {specify the common commercial names of the printed matter}; publication of educational articles published in books, manuals, newsletters, reviews, magazines in electronic form featuring {indicate the subject matter}; on-line non-downloadable electronic publications in the nature of books, manuals, newsletters, reviews, magazines in the field of {specify the field of use}; 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} for educational and training purposes; radio and television entertainment in the nature of conducting a sports competitions and live performances by a musical band; organization of sports and music competition for educational and training purposes; entertainment services, namely, arranging and conducting of conferences, seminars, workshops, sports competitions, live {indicate the type of live performance, e.g., audio} performances by {indicate who performs the performance}, conventions and exhibitions for cultural and educational purposes in the fields of science, engineering, social sciences, and business; sporting and cultural activities in the nature of sports competitions, live {indicate the type of live performance, e.g., audio} performances {indicate who performs the performance}, conventions and exhibitions for cultural and educational purposes; information, advisory and consultancy in relation to the aforesaid services.
Class 041: Scientific and technological services, namely, research and design relating thereto in the fields of software development, engineering, science, mathematics, veterinary medicine and architecture; industrial analysis and research services in the fields of software development, engineering, science, mathematics, veterinary medicine and architecture; research and development of new products for others; computer systems analysis, namely computerised analysis of scientific data; data encryption 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 software development, engineering, science, mathematics, veterinary medicine and architecture; updating of computer software; engineering services in the field of software development, engineering, science, mathematics, veterinary medicine and architecture; hosting computer websites of others; creating and maintaining websites for others; monitoring of computer systems by remote access for the purposes of {specify the purpose of the computer monitoring} all for education purpose; rental of computer software and web servers; surveying; technical research in the fields of software development, engineering, science, mathematics, veterinary medicine and architecture; 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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Nakia D. Henry/
Trademark Attorney (Law Office 117)
Phone: (571) 272-7208
Fax: (571) 273-7208
E-mail: nakia.henry@uspto.gov
RESPONSE GUIDANCE
