UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/605430
APPLICANT: Professional Accreditation for Telecommu ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PATT
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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 76/605430
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52. The current drawing is not acceptable because it contains electronic noise, which does not appear to be part of the mark, and it will not reproduce satisfactorily. TMEP §807.07(a).
The requirements for a special-form drawing are as follows:
· The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.
· Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
· The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.
· If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54.
The Office strictly enforces these drawing requirements.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch. The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809. All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.
RECITATION OF SERVICES
The recitation of services is unacceptable as indefinite because the nature of the services is unclear. The use of the language “to certify technicians” in the recitation makes it unclear whether the applicant is using the mark as a certification mark or a service mark. The applicant must specify the common commercial name for the services. The applicant may adopt the following recitation, if accurate: TMEP §1402.11.
Class 41: Education services, namely, providing training courses in the field of telecommunications
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. §2.71(a); TMEP §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.
Applicant must clarify whether it is applying for a certification mark or a service mark. A certification mark is not the same as a trademark or service mark, i.e., it is not used to identify the source of goods and/or services. Rather, a certification mark is used to certify one of the following:
(1) Regional or other geographic origin of certain goods and/or services;
(2) Material, mode of manufacture, quality, accuracy or other characteristics of such goods and/or services; or
(3) That members of a union or other organization performed the work or labor on the goods and/or services.
Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1306.01.
If the applicant is using the mark as a certification mark the applicant must complete and return the form for a certification mark that follows. TMEP §§1306 et seq. A new filing fee is not required.
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: The applicant may adopt the following if accurate:
Class B: Providing telecommunications services
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.).
(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 exercising 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 belief are believed to be true.
Date:
Signature:
_____________________________________________________
Print or Type Name and Position of Signatory
Applicant must submit a substitute specimen showing use of the proposed mark as a certification mark for the goods and/or services identified in the application. Such use must be by parties authorized by applicant to use the mark. 37 C.F.R. §2.56(a)(5); TMEP §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 of record is unacceptable because it does not show use as a certification mark. Specifically, the specimen comprises a certificate and does not show proper certification mark use because it does not show the mark used by an authorized party.
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 verified 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).
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.
Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to office actions.
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax. TMEP 306.04; Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
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.
/Jennifer Martin/
Examining Attorney, L.O. 116
(571) 272-9193; (571) 273-9116 (fax)
Jennifer.Martin@uspto.gov
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.