Offc Action Outgoing

CAIA

Chartered Alternative Investment Analyst Association, Inc.

TRADEMARK REGISTRATION NO. 3059268 - CAIA - 39543-003001

To: Chartered Alternative Investment Analyst (tmdoctc@fr.com)
Subject: TRADEMARK REGISTRATION NO. 3059268 - CAIA - 39543-003001
Sent: 01/14/16 07:09:59 AM
Sent As: PRG@uspto.gov
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

 

    U.S. REGISTRATION NO.           3059268

 

    OWNER:    Chartered Alternative Investment Analyst

 

 

        

76451397

 

    CORRESPONDENT’S ADDRESS:

  ROBERT M. O'CONNELL, JR.

  Fish & Richardson P.C.

  PO Box 1022

  Minneapolis MN 55440-1022

 

 

 

 

    MARK:       CAIA

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO.   39543-003001       

 

    CORRESPONDENT’S EMAIL ADDRESS: 

 tmdoctc@fr.com

 

 

 

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

 

 

POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 1/14/2016

U.S. Registration Number  3059268

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on September 11, 2015.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason set forth below.

 

Summary of Issues Registrant Must Address

·         Certification Mark Requirements

 

Certification Mark Requirements

 

The mark, CAIA, is registered as a certification mark for:

 

Certifying that persons in the investment industry have met certain qualifications in the field of alternative investments, in Class B.

However, the owner has not provided the additional requirements for a Section 8 Affidavit or Declaration pertaining to a certification mark.  In addition to the general requirements applicable to all registrations for which use is claimed, a Section 8 Affidavit or Declaration pertaining to a certification mark must include:

(1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration (see 37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1604.21(a));

(2) A statement that the owner is exercising legitimate control over the use of the mark in commerce (see TMEP §1604.21(b));

(3) A statement specifying what the owner is certifying about the goods or services in the registration (see 37 C.F.R. §2.45(a)(4)(i)(A); TMEP §1604.21(c)); and

(4) A statement that the owner is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the owner (see 37 C.F.R. §2.45(a)(4)(i)(C); TMEP §1604.21(d)).

37 C.F.R. §2.161(j)-(j)(3).

Therefore, the owner must comply with the following additional requirements: 

 

If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have not changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a statement to that effect.  37 C.F.R. §2.161(j)(1)(ii); TMEP §1604.21(a).  If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a copy of the revised certification standards.  Id.

 

The owner must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: The owner is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the Section 8 Affidavit or Declaration.”  See 37 C.F.R. §2.161(b), (j)(2); TMEP §1604.21(b).

 

The Section 8 Affidavit or Declaration must include a certification statement specifying the characteristic, standard, or other feature that is being certified by the mark.  TMEP §1604.21(c); see 37 C.F.R. §§2.45(a)(4)(i)(A), 2.161(j)(3).

Because the registration issued from an application based on Section 1 of the Act, the registration as issued included a certification statement specifying what the owner is certifying about the goods or services in the registration.  See 37 C.F.R. §2.45(a)(4)(i)(A).  This statement, if still accurate, must be included in the Section 8 Affidavit or Declaration.  See 37 C.F.R. §2. 161(j)(3).  If what is being certified about the goods or services has changed, the owner must include in the Section 8 Affidavit or Declaration an amended certification statement specifying what the owner is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted.  TMEP §1604.21(c); see 37 C.F.R. §2.173(f); TMEP §1609.12.

The following format is suggested:

The certification mark, as used by persons authorized by the certifier, certifies that the services are provided by individuals that have successfully completed examinations and other specified certification standards.

 

The owner must submit the following statement: The owner is not engaged in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the owner.  37 C.F.R. §2.161(j)(3); TMEP §1604.21(d); see 37 C.F.R. §2.45(a)(4)(i)(C).

 

The following declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit or Declaration, if properly signed and dated:

 

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

 

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

 

The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:

 

(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

 

(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

 

(3)  An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

 

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

 

Response Guidelines

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 10th year anniversary date on February 14, 2016, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

 

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this registration will be placed in the official registration record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

 

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

TRADEMARK REGISTRATION NO. 3059268 - CAIA - 39543-003001

To: Chartered Alternative Investment Analyst (tmdoctc@fr.com)
Subject: TRADEMARK REGISTRATION NO. 3059268 - CAIA - 39543-003001
Sent: 01/14/16 07:09:59 AM
Sent As: PRG@uspto.gov
Attachments:





IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 01/14/2016 FOR
REGISTRATION NO. 3059268


Please follow the instructions below to continue the examination of your post registration filing:

VIEW OFFICE ACTION: Click on this link

http://tsdr.gov.uspto.report/view.action?DDA=Y&sn=76451397&type=OOA&date=20160114

(or copy and paste this URL into the address field of your browser), or visit http://tsdr.gov.uspto.report/ and enter the registration number to access the Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required, (2) how to respond and (3) the applicable response time period your response deadline will be calculated from.

Do NOT hit 'Reply' to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail tsdr@uspto.gov. Please contact the assigned examiner with questions about the Office action.

WARNING


1. The USPTO will NOT send a separate e-mail with the Office action attached.

2. Failure to file any required response by the applicable deadline may result in the cancellation and/or expiration of your registration.

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