To: | University of Cincinnati (licensing@uc.edu) |
Subject: | U.S. Trademark Application Serial No. 88613991 - CINCINNATI BEARCATS - 1505966 |
Sent: | December 23, 2019 02:47:35 PM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88613991
Mark: CINCINNATI BEARCATS
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Correspondence Address: |
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Applicant: University of Cincinnati
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Reference/Docket No. 1505966
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 23, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On December 23, 2019, the examining attorney and Martin Ludwig discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
SPECIMEN REFUSAL - NO DIRECT ASSOCIATION WITH SERVICES (Partial)
THIS PARTIAL REQUIREMENT APPLIES TO CLASS 41 ONLY
Registration is refused because the specimen does not show use in commerce of the applied-for mark with the identified services in International Class 41. 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), 1301.04(f)(ii), (g)(i). Specifically, the specimen fails to show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987).
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 services 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). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that the specimen is an online retail storefront for selling applicant’s merchandise. However, there is no information contained therein regarding education; thus, the specimen fails to create an association between the mark and the service activity.
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 services 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 the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
PARTIAL ABANDONMENT ADVISORY
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.
If applicant does not timely respond to this Office action, Class 41 will be deleted from the application. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with Classes 21 and 25 only. See TMEP §718.02(a).
RESPONSE GUIDELINES
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
SECTION 2(f) CLAIM BASED ON PRIOR REGISTRATION
The word “CINCINNATI” in the mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No. 1505966 on the Principal Register for the same mark for sufficiently similar goods and/or services.
TMEP §1212.04(e); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(1).
How to respond. Click to file a response to this nonfinal Office action.
/Roger T. McDorman/
Trademark Examining Attorney
Law Office 109
571-272-5224
roger.mcdorman@uspto.gov
RESPONSE GUIDANCE