To: | President and Fellows of Harvard College (trademarks@sunsteinlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88569220 - HARVARD DATA SCIENCE REVIEW - 2465/2053 |
Sent: | November 08, 2019 06:19:50 PM |
Sent As: | ecom119@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. 88569220
Mark: HARVARD DATA SCIENCE REVIEW
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Correspondence Address: SUNSTEIN KANN MURPHY & TIMBERS LLP
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Applicant: President and Fellows of Harvard College
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Reference/Docket No. 2465/2053
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 08, 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 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).
In this case, applicant must disclaim the wording “DATA SCIENCE REVIEW” because it is not inherently distinctive. These unregistrable terms 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).
The wording “data science” appears five times in the identification of goods and services. Moreover, the attached dictionary evidence shows the term “REVIEW” means “[a] periodical publication with critical articles on culture and current events”. Thus, the wording “DATA SCIENCE REVIEW” merely describes applicant’s publications and online non-downloadable publications that pertain to the field of data science, as well as the applicant’s collaboration promotion services that are provided by means of a website where such publications are available.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DATA SCIENCE REVIEW” 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.
THIS PARTIAL REFUSAL APPLIES TO CLASS 16 ONLY.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 16. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen for the goods in International Class 16 is identified as “Screenshots of the Applicant's website showing the mark in connection with where the goods can be downloaded.” Although the referenced screenshots show the applied-for mark in use in connection with downloadable electronic publications, they do not show use of the applied-for mark in connection with “publications, namely, research articles in the field of data science; publications, namely, journals in the field of data science” as such goods are considered to be printed publications when they are classified in Class 16.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
ADVISORY: AMENDMENT TO IDNETIFICATION AND CLASSIFICATIO OF GOODS SUGGESTED
Please Note: Applicant may obviate the specimen refusal above by amending the identified identification and classification of goods in Class 16 to the following identification and classification of goods in Class 9, for which the current specimen of record would be acceptable, if accurate:
Class 9: Downloadable electronic publications in the nature of research articles in the field of data science; downloadable electronic publications in the nature of journals in the field of data science
How to respond. Click to file a response to this nonfinal Office action
/John M.C. Kelly/
John M.C. Kelly
Examining Attorney
Law Office 119
571-272-9412
john.kelly@uspto.gov
RESPONSE GUIDANCE