To: | Dimensional Fund Advisors LP (mturgeon@vedderprice.com) |
Subject: | U.S. Trademark Application Serial No. 90281767 - DIMENSIONAL 4S FRAMEWORK - 04229007061 |
Sent: | March 31, 2021 01:07:57 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90281767
Mark: DIMENSIONAL 4S FRAMEWORK
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Correspondence Address: |
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Applicant: Dimensional Fund Advisors LP
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Reference/Docket No. 04229007061
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: March 31, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the prior pending application, identification and disclaimer issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search
The examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). However, the examining attorney has found the following potentially conflicting application. TMEP Section 704.02.
Prior Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Other Considerations
Although the examining attorney has cited a pending application, the applicant may respond by submitting evidence and arguments in support of registration. If applicant chooses to respond, the following issue must also be addressed.
The Recitation of Services is Indefinite
Some of the wording used as the recitation of services is unacceptable as indefinite. It is unclear from the current wording exactly what services are used in conjunction with the mark. In particular, the field of the educational services must be further clarified, e.g. “training courses in the field of investment strategic planning for investors.”
Applicant may adopt the following identification of services, if accurate (suggested wording appears in italicized print):
Education services in the nature of courses in the field of _______ (indicate specific field, e.g. investment strategic planning) for investment advisors; training course services in the field of _______ (indicate specific field, e.g. investment strategic planning) investment advisor communications in Class 41. See TMEP §1402.01.
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.
“FRAMEWORK” is defined as the basic structure of something (See attached).[1] This merely descriptive of a feature of the identified services, namely, teaching the basic structure for investments or for investors. An applicant may not claim exclusive rights to terms that others may need to use to describe their services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “FRAMEWORK” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Jason F. Turner/
Jason F. Turner
Examining Attorney
Law Office 108
(571) 272-9353
jason.turner@uspto.gov
RESPONSE GUIDANCE
[1] http://www.merriam-webster.com/dictionary/framework, Merriam-Webster's Collegiate Dictionary, Eleventh Edition copyright © 2008 by Merriam-Webster, Incorporated, Merriam-Webster Online Dictionary copyright © 2015 by Merriam-Webster, Incorporated (accessed: March 31, 2021).