To: | President and Trustees of Colby College (dnathanson@dwmlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88568358 - LUNDER INSTITUTE - N/A |
Sent: | November 12, 2019 02:00:09 PM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88568358
Mark: LUNDER INSTITUTE
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Correspondence Address:
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Applicant: President and Trustees of Colby College
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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: November 12, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
Applicant has applied for the mark “LUNDER INSTITUTE” in stylized font for “Sketch books, Scrap books, Writing or drawing books, Series of non-fiction books in the field of art, Picture books, Art books, Catalogs in the field of art, Prints, namely, photographic prints, art reproduction prints, Printed instructional, educational, and teaching materials in the field of art and art history, Publications, namely, books, workbooks, textbooks, and picture books in the field of art” in International Class 16 and “Education services in the nature of courses at the university level, Educational services in the nature of art schools, Education services, namely, offering courses of instruction at the post-secondary level, Education services, namely, providing live and on-line lectures and workshops in the field of American Art, Art exhibition services, Entertainment and educational services, namely, conducting classes, lectures, workshops, panel discussions, conferences and seminars in the field of American Art and distribution of educational materials in connection therewith, Conducting scholarly research in the field of American Art, and Providing scholarly publications in the field of American Art” in International Class 41.
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from the LEXISNEXIS® surname database, establishing the surname significance of “LUNDER”. This evidence shows the applied-for mark appearing 362 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.
Specifically, please see attached dictionary evidence defining “INSTITUTE” as “An educational institution, especially one for the instruction of technical subjects”. Thus, this wording is merely descriptive of applicant’s goods and services because applicant is an educational institution that provides educational services.
In view of the above, the applied-for mark, “LUNDER INSTITUTE”, is refused on grounds of surname significance under Trademark Act Section 2(e)(4).
SUPPLEMENTAL REGISTER ADVISORIES
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Disclaimer Requirement if Amending to Supplemental Register
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “INSTITUTE” apart from the mark as shown.
TMEP §1213.08(a)(i).
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 AND/OR SERVICES REQUIREMENT
In International 16, the wording “Art books” in the identification of goods is indefinite and must be clarified because it does not specify the nature of the books. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “printed books in the field of art” in International Class 16.
In International Class 41, the wording “Conducting scholarly research in the field of American Art” in the identification of services is indefinite and must be clarified because it does not specify the nature of the field of study. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “conducting scholarly research in the field of American Art education” in International Class 41.
The wording “Providing scholarly publications in the field of American Art” in the identification of services is indefinite and must be clarified because it does not specify the nature of the publications. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “providing on-line scholarly publications in the nature of {indicate specific nature of publication, e.g., e-books} in the field of American Art” in International Class 41.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may substitute the following wording, if accurate:
International Class 16: Sketch books; scrap books; writing or drawing books; series of non-fiction books in the field of art; picture books; printed books in the field of art; catalogs in the field of art; prints, namely, photographic prints, art reproduction prints; printed instructional, educational, and teaching materials in the field of art and art history; publications, namely, books, workbooks, textbooks, and picture books in the field of art
International Class 41: Education services in the nature of courses at the university level; educational services in the nature of art schools; education services, namely, offering courses of instruction at the post-secondary level; education services, namely, providing live and on-line lectures and workshops in the field of American art; art exhibition services; entertainment and educational services, namely, conducting classes, lectures, workshops, panel discussions, conferences and seminars in the field of American art and distribution of educational materials in connection therewith; conducting scholarly research in the field of American art education; providing on-line scholarly publications in the nature of {indicate specific nature of publication, e.g., e-books} in the field of American art
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirement in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Drew Ciurpita/
Examining Attorney
Law Office 114
571-272-8002
drew.ciurpita@uspto.gov
RESPONSE GUIDANCE