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
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CORRESPONDENT’S ADDRESS: |
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MARK: CAIA
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CORRESPONDENT’S REFERENCE/DOCKET NO. 39543-003001
CORRESPONDENT’S EMAIL ADDRESS: |
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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
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.
(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:
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).
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 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
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.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.