Response to Office Action dated June 30, 2014, S/N 76/716,008

Applicant, Loyola University New Orleans (“Applicant”) hereby respectfully responds to
the Office Action dated June 30, 2014 for U.S. Trademark Application Serial No. 76/716,008 for
the mark, LOYOLA UNIVERSITY NEW ORLEANS (stylized and/or with design) (the
“Mark”).

I. Refusal Section 2(d)

Registration of the subject Mark was refused because of a perceived likelihood of
confusion with the several marks, including LOYOLA UNIVERSITY CHICAGO AD-
MAJOREM-DEI-GLORIAM 1870 and design for “educational services, namely, providing
courses of instruction at the university level” and U.S. Registration No. 3,981,095 therefor;
LOYOLA UNIVERSITY CHICAGO AD-MAJOREM-DEI-GLORIAM 1870 and design for
“paper goods and printed matter, namely, paperweights; desktop business card holders and wallet
business card holders; note cards; printed invitations and publications, namely, annual reports,
course catalogs and schedules, student handbooks, campus directories, [ telephone directories, ]
media guides, [ lectures, ] advertisements, posters, paper banners, announcements, postcards and
greeting cards” and U.S. Registration No. 3,007,281 therefor; LOYOLA UNIVERSITY
CHICAGO AD-MAJOREM-DEI-GLORIAM 1870 and design for “clothing, namely, t-shirts,
shirts, crew neck shirts, polo shirts, sweatshirts, shorts, sweat pants, warm up suits, jackets, hats”
and U.S. Registration No. 3,005,676 therefor; LOYOLA UNIVERSITY CHICAGO (standard
characters) for “educational services, namely, providing courses of instruction at the university
level” and U.S. Registration No. 2,903,481 therefor; LOYOLA UNIVERSITY CHICAGO
(standard characters) for “clothing-namely, t-shirts, shirts, crew necks, polo shirts, sweatshirts,
shorts, sweat pants, warm ups, jackets, and hats; infantwear” and U.S. Registration No.
2,903,480 therefor; LOYOLA UNIVERSITY CHICAGO AD-MAJOREM-DEI-GLORIAM
1870 and design for “services, namely, providing courses of instruction at the university level”
and U.S. Registration No. 1,643,970 therefor (collectively, the “Loyola University Chicago
Marks”); the mark LOYOLA UNIVERSITY MARYLAND and design for “educational services
in the nature of courses at the university level” and U.S. Registration No. 4,303,573 (the “Loyola
University of Maryland Mark”); the mark WOLFPACK for “Shirts, Slacks, Jeans, Jackets,
Sweaters, Caps, Parkas, Shorts, Jogging Suits, Sweatsuits, Vests, Neckties, Leisure Suits,
Raingear, Sport Coats, Cheerleading Outfits, Sleepwear, Socks, Athletic Jerseys and Shorts” and
Entertainment Services-Namely, Promoting and Conducting College Level Men’s and Women’s
Sporting Events and U.S. Registration No. 1,259,508 therefor; and WOLFPACK for, inter alia,
“Decals; stickers; notebooks; folders; notepads; writing paper; envelopes; greeting cards; note
cards; pens and pencils; book covers; bookends; posters; postcards; binders; note pad holders;
notebook filler paper; paper napkins and paper placements; newsletters and informational
material, namely announcement cards concerning university activities and events; and paper
coasters;” “Drinking glasses, mugs, and shot glasses; squirt bottles sold empty; thermal insulated
beverage containers; pitchers; vases; coasters not of paper or table linens; decorative figurines
and statues composed primarily of porcelain; stainless steel tankards; bowls, and cups;” “Shirts;
t-shirts; jackets; sweaters; caps; shorts; cheerleading outfits, namely, skirts, shorts, pants, shirts,
blouses, tops, headbands and sweaters; sleepwear; athletic jerseys; visors; hats; parkas; jogging
suits; sweatsuits; vests; neckties; sport coats; socks; belts, and footwear;” and “Entertainment
services, namely, arranging, organizing and staging a wide variety of college level men’s and

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women’s sporting events, excluding ice hockey” and U.S. Registration No. 3,016,722 therefor
(the “North Carolina State University Marks”).

The Applicant is pleased to submit herewith two fully executed Trademark and Service
Mark Coexistence Agreements: one between Loyola University New Orleans and Loyola
University Chicago (the “Loyola University Chicago Coexistence Agreement”), and one
between Loyola University New Orleans and Loyola University Maryland (the “Loyola
University Maryland Coexistence Agreement”) (collectively, the “Loyola Coexistence
Agreements”). The Loyola Coexistence Agreements note, in pertinent part, that the parties
recognize the validity of each other’s use of their respective marks in connection with their
respective services; agree that their respective marks are sufficiently different; that there is no
likelihood of confusion; acknowledge that the relevant consumers for higher education services
are attentive and sophisticated; that the parties have peacefully co-existed for many years without
confusion; and that for these and other reasons recited in the agreement, the owner of the
registered marks agree to the applicant’s use and registration of the subject Mark.

Additionally, with respect to the North Carolina State University Marks, the Applicant is
pleased to submit herewith a Consent Agreement dated January 3, 2012, by and between the
Applicant, and North Carolina State University, a constituent institution of the University of
North Carolina and an agency of the State of North Carolina (“NC State”) (the “NC State
Consent Agreement,” and, together with the Loyola Coexistence Agreements,” the “Coexistence
Agreements”). The NC State Consent Agreement, which predates the Applicant’s application
for the Mark (Serial No. 76/716,008), recognizes NC State’s use of the North Carolina State
University Marks, and sets forth the conditions upon which NC State consents to Applicant’s use
of the word “Wolf Pack,” including, inter alia: separation of the words “Wolf” and “Pack” by at
least one character space; and the mandatory inclusion of “Loyola” and/or “New Orleans,” or
other Loyola school designation, so long as Applicant does not use the term “WOLF PACK”
with the color red (Pantone PMS 186) alone or in combination with white. Applicant submits
that it and NC State executed the NC State Consent Agreement specifically do avoid confusion
as to their respective uses of the word “WOLFPACK” or “WOLF PACK” and to set forth
parameters for same on a going-forward basis. Applicant further submits that that the Mark
complies with the Consent Agreement.

In light of the foregoing and the substance of the Coexistence Agreements provided
herewith, the applicant respectfully requests that the Examining Attorney reconsider the position
articulated in the Office Action dated June 30, 2014 and withdraw the Section 2(d) refusal noted
therein.

II. Identification of Goods and Services

Applicant consents to the adoption of the following identification of goods and services
suggested by the Examiner and confirms that it is accurate: “Stationery, binders, note books,
note pads, stationery folders, decals, stickers, posters, day planners, postcards, bookmarks,
calendars; educational books, reference books, instructional and teaching books and pamphlets,
and periodical brochures, and pamphlets all in the areas of university level courses of study;
newsletters, newspapers, and magazines featuring college life, campus activities, academics,
educational, and athletic programs, and alumni in International Class 16.”

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III. Description of the Mark; No Color Claim

Applicant consents to the adoption of the following description of the Mark suggested by
the Examiner and confirms that it is accurate: “The mark consists of the design of stylized head
of a wolf bearing its teeth. Beneath the wolf head appears the wording LOYOLA in stylized
yearbook font, and beneath LOYOLA is the wording WOLF PACK in smaller font.” Applicant
confirms that color is not a feature of the mark. Furthermore, Applicant submits the following
substitute black-and-white drawing of the mark to replace the color drawing of record.

Respectfully submitted,

s/Benjamin W. Janke
BENJAMIN W. JANKE (LA 31796)
Attorney of Record

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