UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  76/539237

 

The assigned trademark examining attorney has reviewed the referenced application filed on August 22, 2003, and has determined the following.

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Services

If accurate, the services applicant intends to certify should be amended to: consultation in the field of advertising and assisting in the management of advertising accounts.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Disclaimers

Applicant must disclaim the descriptive wording “provider” apart from the mark as shown because it merely describes the role of the party rendering the services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “provider” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Copy of Certification Standard Will Be Required

 

NOTE:  When applicant submits an amendment to allege use or a statement of use, applicant must also submit a copy of the certification standards.  37 CFR 2.45(b); TMEP 1306.06(g)(ii).

 

Applicant Claims Intent to Use Instead of Intent to Exercise Legitimate Control

The application states that the applicant “has a bona fide intention to use the mark in commerce.” Certifying organizations own certification marks and grant authority to others to use their marks. The applicant must amend the application to state that it “has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce,” if accurate.  TMEP §1306.06(g)(iii).

 

Amend “Applicant” to “Certifier”

The applicant must amend the certification statement by deleting the word “applicant” and substituting the wording “the certifier.”  In re National Association of Purchasing Management, 228 USPQ 768, 769 n.2 (TTAB 1986).  This amendment is necessary because the language will be printed on the registration certificate.

 

Fee Increase

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.

 

 

 

/Hannah Fisher/

Trademark Examining Attorney

Law Office 111

(703) 308-9110 x 171 or (301) 610-5388

Fax: (703) 746-8111

 

 

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 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.