UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/509774
APPLICANT: Reed, David C.
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CORRESPONDENT ADDRESS: DAVID C. REED 1025 WELCH ST GOLDEN CO 80401-4349
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: EMONA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/509774
The assigned trademark examining attorney has reviewed the referenced application and determined the following.
SEARCH DEFERRED 37 C.F.R. §2.61(b); TMEP §704.02 The examining attorney defers a search of the Office records until the applicant responds.
Applicant has submitted an Application for the proposed mark EMONA, for
Administrative company that coordinates services for the marketing and management of a telecommunications teaching and research system and related equipment, asserting the mark is a Certification Mark.
The specimen is not acceptable because it does not show that the mark is used to certify anything. The applicant must submit a substitute specimen showing certification mark use by parties authorized by the applicant to use the mark. 37 C.F.R. §2.56(b)(5); TMEP §1306.06(c). The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
Please note the following with respect to certification marks. See TMEP §1306.01.
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “certification mark” as follows:
The term “certification mark” means any word, name, symbol, or device, or any combination thereof--
(1) used by a person other than its owner, or
(2) (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
A certification mark “is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark....” In re Florida Citrus Commission, 160 USPQ 495, 499 (TTAB 1968).
There are generally three types of certification marks. First, there are certification marks that certify that goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese). See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France). See TMEP §§1306.02 et seq.
Second, there are certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corporation of America, 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier’s safety standards).
Third, certification marks may certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. See TMEP §1306.03 and cases cited therein for further information.
The statutory definition differentiates certification marks from trademarks or service marks by two characteristics. First, a certification mark is not used by its owner and, second, a certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person. See TMEP §1306.09(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark or collective membership mark.
See Holtzman, Certification Marks: An Overview, 81 Trademark Rep. 180 (1991).
Note: The purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source. In certifying, the same mark is used on the goods or services of many different producers.
The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, by methods determined by the certifier/owner. The placing of the mark on goods or its use in connection with services thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met. TMEP § 1306.02.
The specimen of record in this case does not show that the proposed mark is used to certify anything. Instead, the mark is used merely as a domain name or address used by computer users to access on-line computer information. When used in that manner, the applicant’s mark does not certify anything. Thus, the proposed mark fails to function as a certification mark.
For the foregoing reasons, registration of the proposed mark is refused.
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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.
The drawing displays the mark as EMONA. This differs from the display of the mark on the specimen, where it appears as WWW.EMONA-TIMS.COM.
The applicant may not amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).
Therefor, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. §2.51; TMEP §807.14. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.
The substitute specimen was in use in commerce at least as early as the filing date of the application.
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.
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Signature / Print or Type Name & Position
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Date
The exact nature of the service in connection with which the applicant uses the mark is not clear from the present record. The applicant must submit samples of advertisements or promotional materials. If such materials are not available, the applicant must describe the nature, purpose and channels of trade for the services. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The facts in this application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark. Thus, the applicant must submit a further explanation as to the activities in which the mark is used and should submit a sufficient disclosure of the facts to enable a proper examination to be made. The manner in which the activities associated with a mark are conducted is the main factor that determines the type of mark. The conduct of parties involved with the mark evidences the relationship between the parties, and the responsibilities of each to the goods or services and to the mark. TMEP §1306.09.
Thus, the applicant must submit additional information with respect to the activities in which the mark is used.
The applicant must amend the application to identify more specifically the goods or services which are certified; if in fact Applicant has a certification mark.
The applicant may wish to consult the on-line identification manual on the PTO homepage for
acceptable common names of goods and services.
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
37 C.F.R. Section 2.71(a); TMEP §1402.06 While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. Therefor, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.
The fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).
If Applicant established that they have a certification mark then 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).
Applicant states that standards have been submitted. They were not part of the application.
Amendment of Certification Statement Is Required
If Applicant established that they have a certification mark
The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark. The statement may begin with the wording, “The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . .” See 37 C.F.R. §2.45.
The applicant in this case has not submitted a proper certification statement. The statement submitted by the applicant merely states that the applicant has expended significant resources to develop his certification standards. Thus, the applicant must amend the certification statement in compliance with the following, per TMEP §1306.(g)(i).
All of the characteristics or features that the mark certifies should be included in the statement. A mark does not have to be limited to certifying a single characteristic or feature.
The characteristics or features that the mark certifies should be explained in reasonable detail, so that they are clear. The broad suggestive terms of the statute, such as quality, material, mode of manufacture, are generally not satisfactory by themselves because they do not accurately reveal the nature of the certification. How specific the statement should be depends in part on the narrowness or breadth of the certification. For example, “quality” would not inform the public of the meaning of the certification where the characteristic being certified is limited, for example, to the strength of material, or the purity of a strain of seed.
The statement of certification in the application is printed on the registration certificate. For that reason it should be reasonably specific but does not have to include the details of the specifications of the characteristic being certified. If practicable, however, more detailed specifications should be made of record in the application file.
Although the information as to what the mark certifies may appear in the same statement as the identification of goods and/or services, it is preferable that these elements be recited separately in the application.
If Applicant established that they have a certification mark then 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).
Inquiry of Significance
The applicant must indicate whether the wording "EMONA" has any significance in the relevant trade or industry or as applied to the services. 37 C.F.R. Section 2.61(b).
Response to Office Action
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
Please note: If the applicant submits a response via email, an electronic signature is required. An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes. In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature. A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format. TMEP Section 304.08
The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
/leb/ Linda E. Blohm, Trademark Examining Attorney
Ecom110@uspto.gov (email address for OFFICIAL responses ONLY)
703.308.9110 ext.130, Law Office 110 Facsimile 703.746.8110
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.