To: | Medical University of South Carolina (ip@nelsonmullins.com) |
Subject: | U.S. Trademark Application Serial No. 88647744 - SCIENCE NEVER SLEEPS MUSC MEDICAL - 005986/09028 |
Sent: | January 21, 2020 01:12:04 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88647744
Mark: SCIENCE NEVER SLEEPS MUSC MEDICAL
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Correspondence Address: |
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Applicant: Medical University of South Carolina
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Reference/Docket No. 005986/09028
Correspondence Email Address: |
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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: January 21, 2020
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.
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 response to this Office action, the applicant must address the following issues:
In this case, applicant must disclaim the wording “MEDICAL UNIVERSITY OF” 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 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 “MEDICAL” appears in applicant’s identification of services. The wording “UNIVERSITY OF” identifies applicant’s identify type. Business type designations must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998). Thus, the wording merely describes applicant’s services because it describes the field of applicant’s services and the entity providing the services.
Applicant must also disclaim the wording “SOUTH CAROLINA” 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 the Columbia Gazetteer shows that SOUTH CAROLINA is a generally known geographic place or location. See TMEP §§1210.02 et seq. The services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. 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.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MEDICAL UNIVERSITY OF SOUTH CAROLINA” 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.
VAGUE AND INCOMPLETE MARK DESCRIPTION – AMENDMENT REQUIRED
The following description is suggested, if accurate: The mark consists of the words “SCIENCE NEVER SLEEPS” stacked one on top of the other; below in the bottom left corner is the design of a building to the left of the letters “MUSC”, which are on top of the words “MEDICAL UNIVERSITY” on top of the words “OF SOUTH CAROLINA”; in the bottom right corner is a design of a microscope that extends next to the last “S” in SLEEPS” and below the “ER” in “NEVER”; all presented on a shaded square background.
INDEFINITE AND OVERLY BROAD IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
Applicant may adopt the following identification, if accurate:
Class 09 – “Entertainment services in the nature of a [applicant to specify, e.g. downloadable] podcast in the field of medical and scientific research news and information.”
Class 38 – “Entertainment services in the nature of [applicant to specify, e.g. transmission of] a podcast in the field of medical and scientific research news and information.”
Class 41 – “Entertainment services in the nature of [applicant to specify, e.g. providing] a podcast in the field of medical and scientific research news and information.”
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY- MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE TO THIS OFFICE ACTION
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@uspto.gov
RESPONSE GUIDANCE