UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

SUPPLEMENTAL OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/459169

 

INTRODUCTION

On March 31, 2003, the examining attorney issued an Office action.  The undersigned inadvertently omitted a cite to a prior registration that would bar registration under Section 2(d) of the Trademark Act.  The examining attorney has included that refusal herein, and has reiterated all of the other refusals/requirements herein for the applicant’s convenience.  The applicant has six months from the mailing date of this supplemental Office action in which to respond to all outstanding issues.  The undersigned apologizes for any inconvenience caused by the applicant’s receipt of a second Office action.

 

LIKELIHOOD OF CONFUSION

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2471837 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The applicant applied to register CCRI  for clinical research and development services.

 

The registered mark is CCRI for medical testing services, namely, conducting clinical trials and surveillance studies for others and coordinating and organizing clinical trials and surveillance studies for others.

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

Here, the services are closely related if not virtually identical, as both involve the conduct of clinical research.  The same consumers will be exposed to the services identified with both marks.  The similarities among the marks and the services of the parties are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

INDUSTRY SIGNIFICANCE

The applicant must indicate what, if any, English industry significance there is for the mark as a term, abbreviation, acronym or other form.  37 C.F.R. Section 2.61(b); TMEP sections 808.03(c) and 809. 

 

APPLICANT’S ENTITY

In the preamble of the application, the applicant identifies itself as a “non-profit organization.”   This designation is not acceptable because the applicant must state the type of organization.  The applicant must submit an amendment indicating the specific type of entity applying, for example, a corporation, an unincorporated association, a partnership or a joint venture.  TMEP §803.03.

 

WHOLE FORM CORRECTION SUGGESTED

The applicant’s attorney has created its own application form, rather than using a form (paper or electronic) created by the Office, which is a common practice.  However, the applicant has omitted several fundamental elements of an application for a use-based certification mark, such as:  a copy of the standards established to determine whether others may use the certification mark in connection with these services (TMEP section 1306)g)(ii)); a clear statement that the applicant exercises “legitimate” control over the use of the certification mark in commerce (TMEP section 1306.(g)(iii)); and the dates of use by others (TMEP section 1306.03(g)(iv)).  The applicant is strongly urged to consult TMEP sections 1306, et seq. for a more detailed discussion of these elements.

 

For simplicity, however, the applicant may wish to submit an amended or substitute application.  See electronic form at :

 

http://eteas.gov.uspto.report/servlet/V2.0/gov.uspto.teas200.newapp.common.servlets.ControllerServlet?actionselection=0&formnumber=2

 

The form sets forth all the requirements for filing an application to register a certification mark.  The applicant either can print and complete the enclosed form and write the words “Substitute Application” with the serial number at the top of the form, or can file its own paperwork but address each of the elements found in the enclosed form on its submission.  The serial number should appear on all documentation sent to the PTO.  TMEP §1306.

 

SPECIMEN

An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  TMEP §904.  This is true even for certification marks.  TMEP section 1306.06[c].  The application does not contain a specimen.  The applicant must submit a specimen, and must submit the following statement:

 

The specimen was in use in commerce by the persons authorized to use the mark at least as early as the filing date of the application.

 

This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.    The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

DATES OF USE

The application does not set forth the dates of first use of the mark.  The applicant must provide a statement specifying the date of first use of the mark and the date of first use of the mark in commerce.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii). 

 

The applicant must amend the application to list the dates‑of‑use clause, which must refer to use by the parties authorized by the applicant to use the mark. TMEP §§1306.01(a) and 1306.06(g)(iv).  The applicant must verify this amendment with an affidavit or declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

STANDARDS

The applicant must submit a copy of the standards used to determine whether others may use the certification mark with their goods or services.  37 C.F.R. §2.45; TMEP §1306.06(g)(ii).

 

STATEMENT THAT MARK IS NOT USED BY APPLICANT

The applicant must submit a statement that “the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied.”  Trademark Act Section 4, 15 U.S.C. §1054; 37 C.F.R. §2.45; TMEP §1306.06(g)(v).

 

SIGNED DECLARATION REQUIRED: ELECTRONIC SIGNATURE OMITTED

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed verification or declaration was provided.  For electronic signatures, TMEP section 302 quotes 37 C.F.R. Section 1.4 as follows:

 

(iii) Where an electronically transmitted trademark filing is permitted, the person who signs the filing must either:

(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; and print, sign and date in permanent ink, and maintain a paper copy of the electronic submission; or

(B) Sign the verified statement using some other form of electronic signature specified by the [Director].

 

The application did not contain the proper electronic or other form of signature.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.

 

The following declaration is provided for the applicant's convenience:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the applicant is exercising legitimate control over the use of the certification mark in commerce and has been at least as early as the application filing date; or that the applicant has had a bona fide intention exercise legitimate control over the use of the certification mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

FEE INCREASE EFFECTIVE JANUARY 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

/egkon/

Elissa Garber Kon

Attorney, Law Office 116

phone  703-306-7917

fax      703-746-8116

email   elissagarber.kon@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

COPY OF CITED REGISTRATION

 

Mark
        CCRI
Goods and Services
        IC 042. US 100 101. G & S: medical testing services, namely, conducting clinical trials and surveillance studies for others and coordinating and organizing clinical trials and surveillance studies for others, in the nature of collection, management and analysis of data, and preparation of study reports. FIRST USE: 19990128. FIRST USE IN COMMERCE: 19990128
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75402771
Filing Date
        December 9, 1997
Filed ITU
        FILED AS ITU
Publication for Opposition Date
        November 10, 1998
Registration Number
        2471837
Registration Date
        July 24, 2001
Owner Name and Address
        (REGISTRANT) Children's Hospital of Philadelphia, The NON-PROFIT CORPORATION PENNSYLVANIA 34th Street and Civic Center Boulevard Philadelphia PENNSYLVANIA 19104
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        John S. Child, Jr.