RESPONSE TO OFFICE ACTION DATED MAY 4, 2009

Applicant respectfully submits this Response to the Office Action dated May 4, 2009 for

Application No. 77667493, which pertains to the mark URBAN PREP for use in connection with

educational services. Applicant appreciates the Examiner’s review of this application, and notes

that a search of the Office records reveals no similar registered or pending marks that would bar

registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Applicant also

acknowledges the additional comments and suggestions raised in the Office Action and

addresses them as follows.

REFUSAL ON THE BASIS THAT THE MARK IS MERELY DESCRIPTIVE

The Examiner has initially refused registration of the mark URBAN PREP under 15

U.S.C. § 1052(e)(1) on the ground that the proposed mark merely describes Applicant’s services.

The rejection rests on dictionary definitions of “urban” and “prep,” and on the conclusion that

URBAN PREP is merely descriptive because it “appears that the applicant provides the services

of an urban preparatory school.” Applicant respectfully disagrees and traverses this rejection.

Applicant respectfully submits that the mark URBAN PREP is suggestive rather than

merely descriptive of Applicant’s services, which are broadly defined as “educational services,

namely, providing classes, seminars, workshops, tutoring, counseling, and mentoring at the high

school level.”

A mark is merely descriptive if it “immediately conveys qualities or characteristics of the

goods [or services].” In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir. 2001). A

descriptive mark “define[s] qualities or characteristics of a product in a straightforward way that

requires no exercise of the imagination to be understood.” Nautilus Group, Inc. v. Icon Health

and Fitness, Inc., 372 F.3d 1330, 1340 (Fed.Cir. 2004) (internal quotation marks and citation
omitted). On the other hand, if “the mental leap between the word and the product’s attribute is

not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.” Id.

(internal quotation marks and citation omitted). Put another way, if a mark “stands for an idea

which requires some operation of the imagination to connect it with the goods, it is suggestive.”

Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 171 (4thCir. 2006). Despite these well-known

definitions, however, pinpointing the spot on the continuum where suggestiveness ends and mere

descriptiveness begins is difficult. See, e.g., Nautilus Group, 372 F.3d at 1340 (“The line

between descriptive and suggestive marks can be difficult to draw.”); Tumblebus Inc. v.

Cranmer, 399 F.3d 754, 763 (6th Cir. 2005) (“The line between merely descriptive and

suggestive marks is admittedly hazy . . . .”); In re Shutts, 217 USPQ 363, 365 (TTAB 1983)

(“We recognize that the suggestive/descriptive dichotomy can require the drawing of fine lines

and often involves a good measure of subjective judgment.”)

One test commonly used to determine whether a mark is suggestive or merely descriptive

focuses on the meaning of the mark through the eyes of potential consumers. In re Colonial

Stores Inc., 55 C.C.P.A. 1049, 1051-52 (C.C.P.A 1968). Here, potential consumers must use an

imaginative leap when viewing the mark URBAN PREP to ascertain its meaning. Applicant

recognizes Examiner’s point that alone, the word “urban” is defined as “of or in a city or town.”

Used in conjunction with other terms, however, “urban” takes on multiple meanings, especially

in modern usage. For example, “urban sportswear” is defined in the online Oxford English

Dictionary as “a style of casual clothing associated with urban culture and often regarded as

stylish and contemporary; (now freq.) spec. such a style originally associated with U.S. hip-hop

culture and typically featuring baggy T-shirts with prominent logos, hooded tops, training shoes,

and clothing associated with sports teams.”

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http://dictionary.oed.com/cgi/entry/50273588/50273588se17?single=1&query_type=word&quer

yword=urban+sportswear&first=1&max_to_show=10&hilite=50273588se17 (draft additions

December 2007). Similarly, in the same dictionary “urban contemporary” is defined as “of,

relating to, or designating a variety of subgenres of popular dance music, chiefly associated with

black musicians . . . freq. reflecting inner-city social themes and attitudes.” Id.

Moreover, in the “wiki”-style, on-line Urban Dictionary, “urban prep” is defined as “a

fresh taste of style. One who dresses the urban way and clashes the prep style perfectly.”

http://www.urbandictionary.com/define.php?term=urban+prep. Although not a traditional

dictionary, the Urban Dictionary comprises definitions based on modern usage. Indeed, the

name “Urban Dictionary” itself demonstrates, after a cursory review of its contents, that “urban”

means many things to many people and reflects more than merely “of or in a city or town.”

In a case featuring a highly similar mark, the court held that UPTOWN RECORDS was

suggestive rather than merely descriptive. Sunenblick v. Harrell, 895 F.Supp. 616, 625

(S.D.N.Y. 1995). The plaintiff used the mark UPTOWN RECORDS for his jazz record label.

Id. at 620. Upon discovering the use of the same mark by a rap artist and the artist’s record

label, the plaintiff sued both for trademark infringement. Id. at 620-22. The court concluded

that, although both parties used “Uptown” because it “signified African-American culture of the

inner city,” each party “had different experiences of what that culture meant.” Id. at 625.

Specifically, the plaintiff associated the mark with the jazz scene in the 1930’s and 1940’s, while

for the defendant the term “embrac[ed] a ‘hip’, ‘cool’, or if you will, electric, urban black

culture.” Id. Accordingly, after exposure to the UPTOWN RECORDS mark a potential

purchaser of either party’s music would not be led immediately to a conclusion as to what type

of music it represented. Id. Rather, “some degree of imagination . . . would be required for such

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purchasers to invest the respective marks with their intended mental association.” Id. Thus, the

court held that the mark UPTOWN RECORDS was suggestive. Id.

Here, Applicant submits that contemporary definitions of phrases using the term “urban”

similarly show that potential consumers viewing the mark URBAN PREP would need to make

an imaginative leap to connect the mark with Applicant’s educational services at the high school

level. Indeed, the terms “urban” and “prep” when combined evoke a “new and unique

commercial impression” as contemplated by TMEP § 1209.03(d), and neither term “retains its

descriptive significance in relation to the goods or services . . . .” TMEP § 1209.03(d).

Accordingly, URBAN PREP is not merely descriptive of Applicant’s “educational services,

namely, providing classes, seminars, workshops, tutoring, counseling, and mentoring at the high

school level.”

Further, when the characterization of a mark as merely descriptive is in doubt, “such

doubts are to be resolved in favor of applicants.” In re Shutts, 217 USPQ at 365. Thus, any

doubt as to whether Applicant’s mark URBAN PREP is suggestive or merely descriptive should

be resolved in Applicant’s favor. Accordingly, Applicant respectfully requests that the Examiner

withdraw the rejection.

DISCLAIMER

In the presently discussed Office Action the Examining Attorney requests that Applicant

disclaim “PREP” because that word appears to be generic in the context of Applicant’s services.

Because Applicant agrees to comply with the Examining Attorney’s request, Applicant avers the

following:

No claim is made to the exclusive right to use “PREP” apart from
the mark as shown.

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CONCLUSION

In light of the above remarks, Applicant submits that the present application is in

condition for allowance, and therefore respectfully requests that Applicant’s mark be approved

for publication. Should any further objection or question arise, a telephone call to the

undersigned attorney would be much appreciated.

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