IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
________________________________________________________________________

Applicant: Roger Ott

Serial No.: 77805309 Filed: August 14, 2009

Trademark Atty: Brian Neville

Word Mark: OUTDOOR ADVENTURE UNIVERSITY
________________________________________________________________________
CERTIFICATE OF TRANSMISSION

I hereby certify that this correspondence is being electronically submitted via Trademark Electronic Application
System (TEAS): May 24, 2010(date of transmission).

Bambi Faivre Walters
Name of Person Faxing This Paper

Signature

May 24, 2010
Date of Transmission
______________________________________________________________________________

RESPONSE TO NOVEMBER 24, 2009 OFFICE ACTION
______________________________________________________________________________
This Amendment and Response (also referred to herein as the “Response) is filed in reply
to the Office Action mailed on November 24, 2009. The Owner respectfully submits the
following response along with any necessary declaration.

Owner responds as follows:

Disclaimer

No claim is made to the exclusive right to use “OUTDOOR ADVENTURE” apart from
the mark as shown.
Response to Section 2(e)(1) Refusal – Merely Descriptive

Examining Attorney Neville asserts that the terms “outdoor”, “adventure”, and

“university” are all descriptive of Applicant’s services. As noted above, the terms “outdoor” and

“adventure” have been disclaimed from Applicant’s mark. However, Applicant asserts that the

term “university” is not descriptive of Applicant’s services.

Examining Attorney Neville states that the term “university” is descriptive of an

educational institution. “Educational institution” is not descriptive of Applicant’s services.

Applicant is a private individual that is neither long-established nor under a public charter. It

would be a mischaracterization to refer to him as an “institution”. See Exhibit 1 for the

definition of “institution”. Examiner Neville includes a definition of “university” from MSN

Encarta in which it is defined as an “undergraduate or postgraduate educational institution: an

educational institute for higher learning that typically includes an undergraduate college and

graduate schools in various disciplines, as well as medical and law schools and sometimes other

professional schools,” or the buildings and people associated with such an institution. Applicant

is not going to provide undergraduate or postgraduate education, nor is he going to provide

educational services for subjects that are generally considered “higher learning”. This definition

supports Applicant’s claim that the term “university” is only descriptive of formal institutions

and is not suggestive of Applicant’s services.

Examiner Neville also goes on to state that “university” is “descriptive in the context of

educational services even outside of a traditional school of higher learning.” To support this claim

Examiner Neville provides three USPTO applications in International Class 041 where the term

“university” has been disclaimed: OUTDOOR UNIVERSITY (UNIVERSITY disclaimed);

ABUNDANCE UNIVERSITY, with drawing (ABUNDANCE UNIVERSITY disclaimed); TRUE
VALUE UNIVERSITY (UNIVERSITY disclaimed). Applicant asserts that this evidence is

completely insufficient to establish that the term “university” refers to “educational services even

outside of a traditional school of higher learning.”

It is entirely unsurprising that some applicants registering a mark in International Class 041

would disclaim the term “university” as descriptive of their service. This is the International Class in

which Educational Institutions would file their marks, and it would be necessary for them to disclaim

the term “university”. Examiner Neville’s own supporting evidence, however, shows that the term

“university” is not always descriptive of educational services. He references the following marks in

his November 24th Office Action: FLAVOR UNIVERSITY (FLAVOR disclaimed); DIVORCE

UNIVERSITY (no disclaimer). A search of USPTO marks in International Class 041 reveals a

multitude of marks where the term “university” has not been disclaimed. A sample of these

marks include: CHAT UNIVERSITY, Registration No. 3229295 (CHAT disclaimed);

MILLWORK UNIVERSITY, Registration No. 3326628 (MILLWORK disclaimed);

VACATION RENTAL UNIVERSITY, Registration No. 3334864 (VACATION RENTAL

disclaimed); BACKGROUND UNIVERSITY, Registration No. 3617689 (BACKGROUND

disclaimed). As these examples show, university is not descriptive of all educational services in

International Class 041, even if the remainder of the mark is disclaimed.

For at least the above reasons Applicant asserts that UNIVERSITY is not descriptive of

his services to be offered under the mark OUTDOOR ADVENTURE UNIVERSITY.

Conclusion

Applicant respectfully submits in good faith that all refusals, rejections, and/or objections

have been overcome and that the applied for mark is in condition for allowance.
If the Office has any questions, the Office is invited to contact the undersigned at (757)

253-5729 (office), (757) 784-1978 (cellular), or [email protected]

Respectfully submitted,

/Bambi Faivre Walters/

Bambi F. Walters, Reg. No. 45,197
Attorney for Applicant
PO Box 5743
Williamsburg, VA 23188
Telephone: 757-253-5729
Date: 24 May 2010
Exhibit 1