UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/459170
APPLICANT: Association of Clinical Research Profess ETC.
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CORRESPONDENT ADDRESS: MARCIA A. AUBERGER PO BOX 34385 WASHINGTON DC 20043-4385
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom116@uspto.gov
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MARK: CCRC
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CORRESPONDENT’S REFERENCE/DOCKET NO: 32616-148900
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/459170
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS NOTED
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
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.
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.
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.
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)
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.
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).
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
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.