Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 05, 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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES:

 

1. Requirement - Legal Entity Designation
2. Requirement – Identification of Services
3. Requirement - Disclaimer

 

SEARCH RESULTS

 

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).

 

However, the applicant must address the following issues:

 

LEGAL ENTITY DESIGNATION

 

The application identifies applicant as University of Louisville, a “body politic and corporate.”  This is not an acceptable legal entity designation because it does not identify a particular type of legal entity in the United States.  See TMEP §803.03.  Therefore, applicant must specify the particular type of legal entity applying, e.g., corporation, association, partnership, or joint venture, and provide the additional information explained below about that entity.  See 37 C.F.R. §§2.32(a)(3)(ii)-(iv), 2.61(b); TMEP §803.03.

 

If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated.  TMEP §803.03(c).

 

If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated.  Id.

 

If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized.  TMEP §803.03(b).  In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  Id.  For foreign partnerships, the names and citizenships of the general partners are not required.  See id.

 

If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized.  Id.  In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture.  Id.  For foreign joint ventures, the names and citizenships of the active members are not required.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

IDENTIFICATION OF SERVICES

 

The wording “Entertainment services in the nature of production of…and artistic, historical, and cultural displays and exhibitions” in the identification of services is indefinite and must be clarified because the nature and field of use of the services is not sufficiently indicated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

Education services in the nature of early childhood instruction; Educational programs, namely, pre-schools; Entertainment services in the nature of live musical and dramatic performances; Entertainment services in the nature of production of musical and dramatic performances and artistic, historical, and cultural displays and exhibitions, namely, [specify type and subject matter, e.g., art exhibition services, providing education in the field of history rendered through live theater performances]; Arranging and conducting educational conferences; Arranging and conducting special events for social entertainment purposes; Organisation of exhibitions for cultural or educational purposes

 

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.

 

DISCLAIMER

                                                     

Applicant must disclaim the wording “UNIVERSITY OF LOUISVILLE” because it is not inherently distinctive.  These unregistrable terms are at best primarily geographically descriptive of the origin of applicant’s services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from www.merriam-webster.com shows that “LOUISVILLE” is a generally known geographic place or location, namely, the largest city in Kentucky.  See TMEP §§1210.02 et seq.  The services for which applicant seeks registration originate in this geographic place or location as shown by the applicant’s address and the specimen of use.  See TMEP §1210.03.  Because the services originate in this place or location, a public association of the services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.  The term “UNIVERSITY” is generic because it refers immediately to the class name and genus of the services, as shown by the identification of services and the specimen of use. 

 

Please note that the applicant has already conceded that these terms are geographically descriptive and generic, respectively, as shown by the Applicant’s claim of ownership of U.S. Registration Nos. 2011567 and 265136.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “UNIVERSITY OF LOUISVILLE” 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.

 

Response guidelines.  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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Susan Stiglitz/

Trademark Examining Attorney

USPTO, Law Office 109

susan.stiglitz@uspto.gov

571-272-9285

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 05, 2019 for

U.S. Trademark Application Serial No. 88592868

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Susan Stiglitz/

Trademark Examining Attorney

USPTO, Law Office 109

susan.stiglitz@uspto.gov

571-272-9285

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 05, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”