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 22202-3514 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
INTRODUCTION
This letter responds to the applicant's communication filed on September 30, 2003, in response to an Office action issued on March 31, 2003, in which the examining attorney required: 1) a statement as to any industry significance for the wording in the mark; 2) the applicant’s entity form; 3) suggested (but did not require) that the applicant submit a whole form correction; 4) a specimen showing use of the mark by authorized others; 5) dates of use, which refer to use by authorized others; 6) standards; 7) a statement that the mark is not used by the applicant; and 8) a properly worded signed declaration. The response is acceptable only as to items 3) and 6).
As to item 1), the applicant failed to explain whether the proposed mark has any industry significance. Therefore, this requirement is continued and made FINAL. As to item 3), the suggestion that the applicant may wish to submit a whole form correction stands, but is not required. As to item 4), the specimen is unacceptable. Therefore, the requirement for an acceptable specimen is continued and made FINAL. As to item 5), the dates of use clause contains the incorrect wording. Therefore, the requirement for dates of use supported by the correct language is continued and made FINAL. As to item 7), the applicant did not state that it does not use the mark, only that it will not use the mark. Therefore, the requirement for a properly worded statement concerning use of the mark is continued and made FINAL. Finally, as to item 8), the applicant used the wrong wording in its declaration. Therefore, the requirement for a properly worded, signed declaration, in support of this application is continued and made FINAL.
INDUSTRY SIGNIFICANCE
The applicant must indicate what, if any, industry significance there is for the mark as an acronym, abbreviation, or as a term itself. 37 C.F.R. Section 2.61(b); TMEP section 814. In response to this requirement the applicant simply stated that “CCRC is an acronym for ‘Certified Clinical Research Coordinator.’” This information is instructive but does not fully satisfy this requirement. The applicant failed to state whether CCRC is a recognized term within its industry, so that the Office may determine whether it is registrable or whether in granting registration, the Office would be depriving others in the industry of a term they need to describe similar goods/services.
Therefore, the applicant must state for the record what, if any, industry meaning there may be for the mark. If this acronym is a coined term, then the applicant may wish to indicate so and that it is not aware of any recognized meaning in the industry.
This requirement is made final.
Applicant must submit a substitute specimen showing use of the mark by parties that applicant certifies. 37 C.F.R. §2.56(a)(5); TMEP §§1306.01(a) and 1306.06(c). In addition to the substitute specimen, applicant must submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a).
The specimen is unacceptable because it does not show that authorized parties use the mark but instead shows use only by applicant. The specimen is an application form bearing the mark that the applicant uses to promote its testing/certification services.
Additionally, the response failed to include a statement indicating that the substitute specimen was used (by authorized persons and not by the applicant) at least as early as the application filing date. The response only indicates the dates of use and refers to the substitute declaration, which contained no statements concerning the specimens and is deficient in its own right, as explained later in this letter.
Acceptable specimens for goods must show use of the mark by authorized persons on or in connection with their goods. They may include labels, tags, packaging or other indicia used on or in connection with the goods, if displayed in a manner that indicates that the goods have been certified. In re Monsanto Company, 201 USPQ 864 (TTAB 1978); Ex parte Porcelain Enamel Institute, Inc., 110 USPQ 258 (Comm’r Pats. 1956). Acceptable specimens for services must show use of the mark by authorized persons in the sale or advertising of their services. They may include advertisements, promotional materials, business cards, patches or pins, or other matter indicating that the services have been certified.
Pending submission of an acceptable specimen, registration is refused for failure to function as a certification mark. Sections 1, 2, 4 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054 and 1127; TMEP §1306.06(c). This refusal will be withdrawn if applicant submits (1) a substitute specimen showing proper use as a certification mark, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a)/§2.59(b)(1)/ §2.59(b)(2).
Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a). 37 C.F.R. §2.20.
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 and the like may jeopardize the validity of the application or document or any resulting registration, declares that: the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)
If applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in .jpg format. 37 C.F.R. §2.56(d)(4). If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
The requirement for an acceptable specimen and the correct supporting declaration language is made final.
Applicant must amend the dates-of-use clause to refer to use by the parties authorized by applicant to use the mark. TMEP §§1306.01(a) and 1306.06(g)(iv). Applicant must verify this amendment with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05. The applicant failed to submit dates of use in its original application, and the dates-of-use clause in the response does not refer to use by parties authorized to use the certification mark. Moreover, the substitute declaration submitted with the response states that the “Applicant is entitled to use such mark in commerce,” and that the applicant is the “owner of the certification mark.” There is no properly signed declaration that attests to the fact that the mark has been in use by authorized persons as of the stated dates.
The applicant should submit the following amended dates of use clause:
The mark was first used by parties authorized by the applicant to use the mark on 2002; and
The mark was first used in commerce by parties authorized by the applicant to use the mark on 2002.
The suggested declaration language appears elsewhere in this letter. This requirement is made final.
Applicant must add to the application record the statement that “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).
In the Office action, the applicant was required to submit this statement in the present tense because the application was and remains filed under Section 1(a), based on (authorized) use in commerce. The applicant instead submitted the following statement: “applicant will not engage in the production or marketing of the goods or services to which the mark is applied.” (Emphasis added.) Since this is a use-based application, the applicant must amend this wording to submit the correct statement, provided in the earlier Office action and again above.
This requirement is made final.
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. The applicant submitted a signed, dated declaration. The applicant, however, failed to include the correct attestations provided in the original Office action. Moreover, the substitute declaration states that the owner of the mark believes that the applicant is “entitled to use the mark in commerce,” which is contrary to authorized certification mark use by others. TMEP sections 1306, et seq.
Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a). 37 C.F.R. §2.20.
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, s/he believes the applicant to be entitled to exercise legitimate control over the use of the mark in commerce, or, if the application is filed under 15 U.S.C. §1051(b) or §1126, s/he believes applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce; 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)
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].
This requirement is made final.
As stated in the earlier Office action, the applicant is free, if desired, to submit another typed version of the declarations and attestations described above. However, again, the applicant is urged to complete and return the substitute application form that appears at the end of this letter for a certification mark, as it already includes much of the correct language that was omitted from both the original application and the response. TMEP §§1306 et seq. A new filing fee is not required.
OPTIONS
Applicant may respond to this final action by either: (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.
If applicant fails to respond within six months of the mailing date of this final action, then the application will be deemed abandoned.
/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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Certification Mark Application 15 U.S.C. §1054
Principal Register - Substitute Application
(Fill in Sections 1-7 below. Submit Certification Standards in 8 as appropriate. Sign and Date.)
(1) Application Serial Number:
(2) Applicant’s Name:
(3) Applicant’s Mailing Address:
(4) Applicant’s Entity Type: (Check one and supply requested information)
____ Individual – Citizen of (Country):
____ Partnership – U.S. State where organized (Country, if appropriate):
Names and Citizenship (Country) of General Partners:
____ Corporation – U.S. State (Country, if appropriate) of Incorporation:
____ Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):
(5) GOODS AND/OR SERVICES BEING CERTIFIED: Applicant must list the goods and/or services it certifies below:
(6) CERTIFICATION STATEMENT: Applicant must specify what feature of the goods or services is being certified, e.g., a particular regional origin, a characteristic or quality of the goods, that the labor was performed by a particular group, etc.
The certification mark certifies that ________________________________________
(7) BASIS FOR APPLICATION: (Check basis or bases which apply, but do not check both the first and second bases (A & B) for the same goods and services – and supply requested information related to each basis)
Applicant has adopted and is exercising legitimate control over the use of the certification mark in commerce and has been exercising legitimate control over the use of the mark in commerce since the filing date of the application.
A specimen showing the mark used by authorized persons is submitted with this application.
Specify Date of First Use Anywhere:
Specify Date of First Use in Commerce:
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Filing:
Specify Foreign Application Serial No.:
Specify Date Foreign Application Filed:
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Registration:
Specify Foreign Registration Number:
Specify Registration Date:
Applicant is not engaged (or will not engage) in the production or marketing of the goods or services to which the mark is applied.
(8) COPY OF CERTIFICATION STANDARDS MUST BE SUBMITTED: Applicant must provide a copy of the standards applicant uses to certify the goods and/or services. If applicant files based on actual use in commerce, then these standards must be submitted with the application. If applicant files based on an intent to use, the standards should be provided with the allegation of use (amendment to allege use or statement of use).
DECLARATION
The undersigned being hereby warned that willful false statements and the like are made 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 s/he is properly authorized to execute this application on behalf of applicant; s/he believes the applicant to be entitled to exercise legitimate control over the use of the mark in commerce, or, if the application is filed under 15 U.S.C. §1051(b) or §1126, s/he believes applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the above identified 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 are made of his/her own knowledge are true and that all statements made on information and believe are believe to be true.
Date:
Signature:
_____________________________________________________
Print or Type Name and Position of Signatory