UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/569071
APPLICANT: Society of Broadcast Engineers
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CORRESPONDENT ADDRESS: BOOTH, FRERET, IMLAY & TEPPER, P.C. |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CTO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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 76/569071
This letter responds to the applicant's communication filed January 21, 2005.
Identification of Services to be Certified
The applicant must clarify the services being certified. That is, the wording of the identification indicates that the services to be certified are “to indicate membership in a certification program” – this makes it sound like the applicant seeks registration for a collective membership mark rather than a certification mark.
The applicant may amend the wording as follows in class B, if accurate:
Radio operator services, namely, operating a television station in compliance government rules and regulations.
General types of goods and services, such as “produce,” “beef,” “fabric,” “dry cleaning services,” or “dental services” are usually acceptable. However, if the certification program itself is limited to specific goods and/or services, then the listing in the application should be more specific. The listing should not include the words “certification of.” The identification of goods and/or services being certified is different from the certification statement that specifies what aspect of the goods and/or services is being certified (e.g., that the work performed was done by a union, that the goods come from a particular geographic place, that the goods or services are of a specified quality, etc.).
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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 dates-of-use clause in the application incorrectly refers to use by applicant rather than the parties authorized to use the certification mark.
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.
Certification Standards
Applicant must submit a copy of its certification standards. 37 C.F.R. §2.45; TMEP §1306.06(g)(ii).
The applicant has simply submitted a statement indicating that “Because Certified Television Operator is an operator certification (rather than an engineering certification), it is administered in a unique way, through the study of a certification handbook published by SBE and completion of a test based on that material within one year.”
This statement is insufficient. The applicant must submit a copy of the actual standards which have been established to determine whether others may use the certification mark in connection with their services. 37 C.F.R. §2.45.
The remaining requirements and refusals have either been withdrawn or complied with.
Responding to This 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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Susan Kastriner Lawrence/
Trademark Attorney
Law Office 116
(571) 272-9186
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.