To: | The Trustees of Indiana University (docketdept@uspatent.com) |
Subject: | U.S. Trademark Application Serial No. 88628532 - INDIANA DAILY STUDENT - 7562-344 |
Sent: | November 08, 2019 09:11:32 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88628532
Mark: INDIANA DAILY STUDENT
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Correspondence Address: WOODARD, EMHARDT, HENRY, REEVES & WAGNER |
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Applicant: The Trustees of Indiana University
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Reference/Docket No. 7562-344
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: November 08, 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.
The applicant must address issues shown below. On November 8, 2019, the examining attorney and Thomas Q. Henry, Esq. ((317) 713-4907) 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.
Initial Section 2(e)(2) Geographically Descriptive Refusal
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 attached evidence from The Columbia Gazetteer of the World shows that “Indiana” is a generally known geographic place or location. See TMEP §§1210.02 et seq. The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by the applicant’s name and address and the specimens of record. See TMEP §1210.03. Because the goods and/or services originate in this place or location, a public association of the goods and/or 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 attached evidence from on-line web excerpts shows is the common name used to describe an identity a type of newspaper directed toward student. See the five (5) representative excerpts attached. In this case, based on the identification and the specimens of record it is clear that the applicant’s goods/services consist of frequently published newspapers directed toward students. Therefore, this wording merely describes a feature and intended user of the applicant’s newspapers. It should also be noted that the wording has been disclaimed as being descriptive/generic.
Claim of Acquired Distinctiveness Based on Section 2(f) Suggested
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
Identification/Recitation & Classification of Goods/Services
The identification/recitation of goods/services is indefinite and must be clarified because based on the classification and specimens of record the nature of the goods/services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition, the goods/services as listed are incorrectly classified and/or classified in more than one International Class. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). As discussed, the applicant will adopt the following identification, if accurate:
“Newspapers,” in International Class 16.
AND
“Providing on-line non-downloadable newspapers,” in International Class 41.
For further 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.
Requirements for a Multiple Class Application
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in two (2) International Classes; however, the applicant submitted a fee sufficient for only one (1) International Class. Accordingly, the applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
NOTE: As discussed, in this case, the applicant should correctly list that dates of first use of the mark anywhere and in commerce for the printed newspapers in International Class 16 and the actual dates of first use of the mark anywhere and in commerce for the services of “providing on-line non-downloadable newspapers,” in International Class 41.
(4) Submit a specimen for each international class. Importantly, the current specimen is acceptable for the services in International Class 41. However, the applicant needs a specimen for the printed “newspapers” in International Class 16. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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).
Disclaimer
The following disclaimer statement is added to the record:
No claim is made to the exclusive right to use “DAILY STUDENT” apart from the mark as shown.
See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).
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.
If the applicant has any questions or needs assistance with the present application, please telephone the assigned examining attorney.
/Jeffery C. Coward/
Trademark Examining Attorney
Law Office 106
Phone: (571) 272-9148
E-mail: jeffery.coward@coward@uspto.gov
RESPONSE GUIDANCE