| 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: | April 21, 2020 04:31:54 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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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 21, 2020
This office action supplements the 08/21/19 office action because a 2d Likelihood of Confusion Refusal was not issued. Further, changes are required for the identification of goods/services requirement. Consequently, a 2d Likelihood of Confusion Refusal is now issued.
In addition to these supplemental issues/actions, it is noted that the initial final office action addressed 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 initially satisfied the amended mark description and color claim, however, the additional disclaimer was not provided and the identification of goods/services amendment remains indefinite and unacceptable, in part. In regard to the additional disclaimer, the undersigned finds the arguments unpersuasive and the requirement is now continued and maintained. 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 continued and maintained.
Summary of Issues Below:
(1) 2d Likelihood of Confusion Refusal- currently issued
(2) Amend the mark description- satisfied
(3) Amend the color claim- satisfied
(4) Amend the identification of goods/services- continued and maintained
(5) Dual filing bases; foreign registration required- satisfied
(6) Additional disclaimer required for geographic wording and transliterated wording- continued and maintained
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3489681. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, the proposed mark is “CityU Hong Kong Institute for Data Science City of University of Hong Kong” with a design and foreign wording. The registrant’s mark is “CityU”. The marks share the wording “CityU”. It is noted that the registrant’s mark is “CityU” in standard character, which means that the mark can be presented in any font, size, or style. The applicant’s mark is presented in a stylized design and inside of a carrier design. The wording is separated from the remainder of the mark as it is presented in larger font in white, which creates a focal point on the wording within the color barrier, situated to the left of the other wording. As the registrant’s mark is in standard character, the mark may be presented in the same manner as that of the applicant.
The marks further differ based upon the additional wording, characters, and a carrier design.
In regard to the additional elements that are added by the applicant, e.g., the additional wording and the characters, it is noted that adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Finally, in regard to the carrier design, it is noted that the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Based upon the identical wording “CityU”, a consumer who encounters the parties’ marks would likely be confused as the
Comparison of the Goods/Services
In the instant case, the proposed goods/services are as follows:
Class 041: Education, namely, education services in the nature of courses at the university level; providing of training in the field of university courses 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; 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; 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, teaching materials and educational materials; publication of educational articles in the nature of books, manuals, newsletters, reviews, magazines in electronic form; on-line non-downloadable electronic publications in the nature of books, manuals, newsletters, reviews, magazines; production of radio and television programmes; production of films, video tapes, video films, video compact disks and digital versatile disks for educational and training purposes; radio and television entertainment in the nature of sports competitions and live performances; organization of sports and music competition for educational and training purposes; entertainment services, namely, arranging and conducting of conferences, seminars, workshops, sports competitions, live performances, 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 performances, conventions and exhibitions for cultural and educational purposes; information, advisory and consultancy in relation to the aforesaid services. 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, 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 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.
The registrant’s goods/services are as follows:
Class 041: Educational services, namely, providing courses at the college level and distributing course materials in connection therewith
The parties’ services are essentially identical as to educational services, namely courses at the college and the university level. “University” is defined as “an institution of higher learning providing facilities for teaching and research and authorized to grant academic degrees”. Please see the attached Merriam-Webster.com dictionary definition. “College” is defined as “a building used for an educational or religious purpose”. Id. The terms are essentially synonyms and refer to facilities or buildings for higher educational learning.
The remainder of the services relating to education, entertainment, and scientific research, design, and computer related services are services that likely travel within similar channels of trade. By way of example, please see the attached document that highlights universities and colleges that offers educational and research services under the same mark. The attached Internet evidence, consisting of the top 50 Research Universities, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Based upon the similarities of the parties’ marks and the relatedness of the parties’ services, consumer confusion is likely.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Informalities
In addition, to the substantive issue(s) identified above, the applicant must respond to the procedural issue(s) specified below:
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 previously attached 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 previously attached websites, captured 3/25/20. Moreover, please see the previously 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 the previously attached evidence.
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, namely, education services in the nature of courses at the university level; providing of training in the field of university courses 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; 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; 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, teaching materials and educational materials; publication of educational articles in the nature of books, manuals, newsletters, reviews, magazines in electronic form; on-line non-downloadable electronic publications in the nature of books, manuals, newsletters, reviews, magazines; production of radio and television programmes; production of films, video tapes, video films, video compact disks and digital versatile disks for educational and training purposes; radio and television entertainment in the nature of sports competitions and live performances; organization of sports and music competition for educational and training purposes; entertainment services, namely, arranging and conducting of conferences, seminars, workshops, sports competitions, live performances, 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 performances, conventions and exhibitions for cultural and educational purposes; information, advisory and consultancy in relation to the aforesaid services. 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, 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 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.
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 042: 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 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) and 44(d):
(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 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
