Offc Action Outgoing

The assigned examining attorney acknowledges receipt of applicant’s response. Through the response, applicant argues against the refusal of the mark. The examining attorney has considered the arguments but is not persuaded by them and continues the refusal of the proposed mark as outlined below. In addition, the Statement of Use is unacceptable for additional reasons included below.

Registration Refused

Registration is refused because applicant is using or intends to use the same mark both as a trademark and/or service mark and as a certification mark, i.e., applicant also has pending applications as well as registrations for the same mark and the same goods and/or services (see attachment(s) for Reg. No(s). 3145952 and 3240207 as well as US Application Nos. 76583999; 76583960 and 76656230. Trademark Act Sections 4 and 14(5)(B), 15 U.S.C. §§1054 and 1064(5)(B); TMEP §1306.05(a).

Trademarks and service marks and certification marks are mutually exclusive. A party may not own a registration as a trademark and/or service mark for goods and/or services and also register that very same mark as a certification mark for such goods and/or services. Conversely, owning a registration as a certification mark precludes registering the same mark as a trademark and/or service mark for any goods and/or services to which the certification mark applies. See In re 88Open Consortium Ltd., 28 USPQ2d 1314 (TTAB 1993); In re University of Mississippi, 1 USPQ2d 1909 (TTAB 1987); In re Florida Citrus Commission, 160 USPQ 495 (TTAB 1968). Moreover, a certification mark is subject to cancellation at any time if it is used “for purposes other than to certify.” Trademark Act Section 14(5)(C), 15 U.S.C. §1064(5)(C); Midwest Plastic Fabricators v. Underwriters Laboratories, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990).

Trademarks or service marks and certification marks are different and distinct types of marks designed to serve different purposes. A trademark or service mark is used by one person on his or her goods and/or services alone, whereas a certification mark is used by authorized persons other than the owner of the mark. A certification mark does not serve as a source-identifier for specific goods and/or services, but rather identifies that a product and/or service has been certified with respect to geographic origin, quality of workmanship, or some other characteristic. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose. TMEP §1306.05(a).

In this matter, applicant is seeking to register the proposed mark as a certification mark. However, the elements that are part of this mark are the same as those registered in the aforementioned trademarks and the same as the marks in US Application Nos. 76583999; 76583960 and 76656230, which has now matured into US Registration No. 3390528.

Applicant Must Surrender Prior Registrations

Applicant owns Registration Nos. 3145952; 3240207 and 3390528 for the same mark for the same or some of the same goods and/or services to be certified by the certification mark. However, Trademark Act Section 14(5)(B), 15 U.S.C. §1064(5)(B), provides for cancellation of a certification mark if the registrant “engages in the production or marketing of any goods and/or services to which the certification mark is applied.” See also Midwest Plastic Fabricators, Inc. v. Underwriters Labs., Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990).

Therefore, before the mark in this application can register, applicant must surrender Registration Nos. 3145952; 3240207 and 3390528. Trademark Act Section 7(e), 15 U.S.C. §1057(e); TMEP §1306.05(b).

With respect to this certification mark application, the record must be clear and uncontradicted that the certification mark is no longer registered or used as a trademark or service mark. See In re Fla. Citrus Comm’n, 160 USPQ 495 (TTAB 1968).

Applicant Must Abandon Pending Applications

Applicant owns application Serial Nos. 76583999 and 76583960 for the same mark for the same or some of the same goods and/or services to be certified by the certification mark. However, Trademark Act Section 14(5)(B), 15 U.S.C. §1064(5)(B), provides for cancellation of a certification mark if the registrant “engages in the production or marketing of any goods or services to which the certification mark is applied.” See cf. Midwest Plastic Fabricators, Inc. v. Underwriters Labs., Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990).

Therefore, before the mark in this application can register, applicant must expressly abandon the prior-filed pending application Serial Nos. 76583999 and 76583960. TMEP §1306.05(b).

With respect to this certification mark application, the record must be clear and uncontradicted that the certification mark is no longer used as a trademark or service mark. See cf. In re Florida Citrus Comm’n, 160 USPQ 495 (TTAB 1968).

Informalities

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.

Claim of Use Instead of Exercise of Legitimate Control

The Statement of Use states: “Applicant is using the mark.” However, while certifying organizations own certification marks, they grant authority to others to use their marks. 37 C.F.R. §2.45(a); TMEP §1306.06(g)(iii).

Therefore, applicant must amend the application to delete the inappropriate wording and replace it with the following: “Applicant has adopted and is exercising legitimate control over use of the certification mark in commerce as of the filing date of the Statement of Use.”

Submit Statement that Mark is Not Used By Applicant

Applicant must add to the application record the statement that “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).

Submit Dates of Use by Authorized Party

The examining attorney continues this requirement. The dates of use in the application refer to use by applicant rather than use by the parties authorized to use the certification mark. However, while certifying organizations own certification marks, they grant authority to others to use their marks. 37 C.F.R. §2.45(a); TMEP §1306.06(g)(iii).

Applicant must amend the dates of use 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 an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.

Submit Copy of Certification Standards

The examining attorney continues this requirement. Applicant must submit a copy of its certification standards. 37 C.F.R. §2.45; TMEP §1306.06(g)(ii).

Conclusion

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Linda M. Estrada/

Trademark Attorney, Law Office 104

U.S. Patent & Trademark Office

(571) 272-9298

(571) 273-9104 Fax

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.