To: | Regents of the University of Michigan (dwtrademarks@dickinsonwright.com) |
Subject: | U.S. Trademark Application Serial No. 88453242 - MICHIGAN ONLINE - 14040-315 |
Sent: | August 29, 2019 06:42:22 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88453242
Mark: MICHIGAN ONLINE
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Correspondence Address: |
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Applicant: Regents of the University of Michigan
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Reference/Docket No. 14040-315
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 29, 2019
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.
SEARCH CLAUSE
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(e)(2) Refusal – Primarily Geographically Descriptive
o Supplemental Register Response Option
- Partial Section 2(f) Claim Not Accepted
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
The applicant has applied to register the mark MICHIGAN ONLINE for “Providing education courses in the field of arts and culture, business, data science, education, health, science, social sciences and technology offered through online, non-downloadable videos and instructor assistance.”
The attached evidence from Merriam-Webster.Com defines the term, MICHIGAN, as a “state in the northern U.S. in the Great Lakes region including an upper (northwestern) peninsula and a lower (southeastern) peninsula and having a border on all of the Great Lakes except Lake Ontario.”
Lastly, purchasers are likely to believe that the services originate in the geographic place named in the mark because of the applicant’s location and because the source of the services is the University of Michigan.
Accordingly, registration is refused under Section 2(e)(2) of the Trademark Act.
SUPPLEMENTAL REGISTER RESPONSE OPTION
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
PARTIAL SECTION 2(f) CLAIM NOT ACCEPTED
Applicant has asserted a claim of acquired distinctiveness based on ownership of a prior registration for the mark M UNIVERSITY OF MICHIGAN. The applied-for mark is MICHIGAN ONLINE. As explained below, the mark in the prior registration does not support applicant’s claim of acquired distinctiveness because it is not the same mark.
A claim of acquired distinctiveness may be based on an applicant’s ownership of one or more active prior registrations of the same mark on the Principal Register. 37 C.F.R. §2.41(a)(1); TMEP §1212.04. In regard to a partial Section 2(f) claim, Applicant may claim ownership of one or more active prior registrations on the Principal Register of that portion of the mark for goods and/or services that are sufficiently similar to those named in the pending application. TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(1). An applied-for mark is considered the same mark if it is the legal equivalent of the previously-registered mark. In re Highlights for Children, Inc., 118 USPQ2d 1268, 1273-74 (TTAB 2016) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1212.04(b).
To be legal equivalents, the applied-for mark must be indistinguishable from the previously-registered mark or create the same, continuing commercial impression such that the consumer would consider them both to be the same mark. In re Highlights for Children, Inc., 118 USPQ2d at 1274, 1275 n.18 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347, 57 USPQ2d at 1812)); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); TMEP §1212.04(b).
In the present case, the applied-for mark and the mark in the prior registration are not the same mark, and thus are not legal equivalents, because the mark for which the partial Section 2(f) claim is based is a different mark from that portion of the applied-for mark.
Therefore, the prior registration does not support applicant’s claim of acquired distinctiveness and the claim is not accepted.
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
RESPONSE GUIDANCE