To: | Society of Broadcast Engineers (jporay@sbe.org) |
Subject: | TRADEMARK REGISTRATION NO. 3043385 - CTO - N/A |
Sent: | 04/05/16 12:12:14 PM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
U.S. REGISTRATION NO. 3043385
OWNER: Society of Broadcast Engineers
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CORRESPONDENT’S ADDRESS: Society of Broadcast Engineers |
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MARK: CTO
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CORRESPONDENT’S REFERENCE/DOCKET NO. N/A
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 4/5/2016
U.S. Registration Number 3043385
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on January 20, 2016. The Section 9 portion of the combined filing can be granted. However, the Section 8 portion is not accepted for the reason(s) set forth below.
Additional Requirements for Section 8 Affidavits or Declarations Pertaining to Certification Marks - Inquiry
The owner has not provided the additional requirements for a Section 8 Affidavit or Declaration pertaining to a certification mark. In addition to the general requirements applicable to all registrations for which use is claimed, a Section 8 Affidavit or Declaration pertaining to a certification mark must include:
(1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration (see 37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1604.21(a));
(2) A statement that the owner is exercising legitimate control over the use of the mark in commerce (see TMEP §1604.21(b));
(3) A statement specifying what the owner is certifying about the goods or services in the registration (see 37 C.F.R. §2.45(a)(4)(i)(A); TMEP §1604.21(c)); and
(4) A statement that the owner is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the owner (see 37 C.F.R. §2.45(a)(4)(i)(C); TMEP §1604.21(d)).
37 C.F.R. §2.161(j)-(j)(3).
Therefore, the owner must comply with the following additional requirements:
Certification Standards
Submitting certification standards for the first time. If the registration issued from an application based solely on Section 44 of the Act, the owner must submit a copy of the standards used to determine who is authorized to use the certification mark in the first Section 8 Affidavit or Declaration filed with the USPTO. See 37 C.F.R. §2.161(j)(1)(i); TMEP §1604.21(a). The standards must cover the full scope of the goods/services identified in the registration. For example, if the goods are “olive oil,” but the standards are only for “extra virgin olive oil,” the owner must submit standards for all types of olive oil or amend the identification to “extra virgin olive oil.” TMEP §1604.21(a).
Further, the standards are not required to be created by the owner, but may be established by another party, such as a government agency or private research organization. Id.
Certification standards submitted in prior filing. If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have not changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a statement to that effect. 37 C.F.R. §2.161(j)(1)(ii); TMEP §1604.21(a). If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a copy of the revised certification standards. Id.
Exercising Legitimate Control
The owner must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the Section 8 Affidavit or Declaration.” See 37 C.F.R. §2.161(b), (j)(2); TMEP §1604.21(b).
Certification Statement
The Section 8 Affidavit or Declaration must include a certification statement specifying the characteristic, standard, or other feature that is being certified by the mark. TMEP §1604.21(c); see 37 C.F.R. §§2.45(a)(4)(i)(A), 2.161(j)(3).
Registrations Issued from Applications Based on Section 1 of the Act:
If the registration issued from an application based on Section 1 of the Act, the registration as issued included a certification statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(i)(A). This statement, if still accurate, must be included in the Section 8 Affidavit or Declaration. See 37 C.F.R. §2. 161(j)(3). If what is being certified about the goods or services has changed, the owner must include in the Section 8 Affidavit or Declaration an amended certification statement specifying what the owner is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. TMEP §1604.21(c); see 37 C.F.R. §2.173(f); TMEP §1609.12.
Registrations Issued from Applications Based Solely on Section 44 of the Act:
If the registration issued from an application based solely on Section 44 of the Act, the registration as issued included a certification statement specifying what the owner will be certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(ii)(A). However, the Section 8 Affidavit or Declaration must include a certification statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §2.161(j)(3). The certification statement from the registration, if still accurate, must be included in the Section 8 Affidavit or Declaration using the present tense “is certifying,” “certifies,” or “is being certified.” If what is being certified about the goods or services has changed, the owner must include in the Section 8 Affidavit or Declaration an amended certification statement specifying what the owner is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. TMEP §1604.21(c); see 37 C.F.R. §2.173(f); TMEP §1609.12.
The following format is suggested:
The certification mark, as used by persons authorized by the certifier, certifies that the goods and/or services provided have <specify>.
Statement that Owner is Not Engaged in Production or Marketing of the Goods/Services
The owner must submit the following statement: “The owner is not engaged in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the owner.” 37 C.F.R. §2.161(j)(3); TMEP §1604.21(d); see 37 C.F.R. §2.45(a)(4)(i)(C).
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The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit or Declaration, if properly signed and dated:
Unless the owner specifically claimed excusable nonuse, the mark was in use in commerce on or in connection with the goods/services or to indicate membership in the collective membership organization identified in the registration, as evidenced by the submitted specimen(s) showing the mark as used in commerce, during the relevant period for filing the 10-year Section 8.
The signatory being warned that willful false statements and the like 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 this submission, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
__________________________
Signature of Authorized Person
__________________________
Type or Print Name
__________________________
Date
The following persons are properly authorized to sign a Combined Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the issuance date of this Office action. The owner must respond to all inquiries set forth in this Office action to avoid cancellation and/or expiration of the registration. 37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16 and 1606.12.
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 102
571-272-8844
jordan.baker@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this registration will be placed in the official registration record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.