Offc Action Outgoing

This Office action is in response to applicant’s communication filed on February 23, 2009. Please note that the application has been amended to the Supplemental Register and the disclaimer is acceptable and has been entered into the record. As such, the descriptive refusal has been withdrawn. However, for the reasons below, the title or degree refusal and specimen requirement are now made FINAL.

REFUSAL MADE FINAL – Title or Degree

Registration has been refused because the proposed mark, as used on the specimen of record, is used to designate a title or degree and does not function as a certification mark. Trademark Act Sections 1, 2, 4 and 45, 15 U.S.C. §§1051-1052, 1054 and 1127; In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983); see TMEP §1306.06(a). As previously noted, even though applicant may award the right to use the proposed mark to persons or entities satisfying its standards, the proposed mark itself does not serve to certify the services being provided by such persons or entities. For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2 and 45 for failure to function as a trademark as used on the specimen(s) of record. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).

Certification marks are marks used with products or services of persons other than the owner of the mark, to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services, or to certify that the work or labor on the goods or services was performed by members of a union or other organization. Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1306. A “collective membership mark” is one used solely to indicate that the user of the mark is a member of applicant’s organization. Trademark Act Section 45, 15 U.S.C. §1127; TMEP §§1304 et seq. A “collective trademark” or “collective service mark” is a mark that members of applicant’s organization use to indicate that the goods or services come from a member of the applicant’s organization rather than from applicant itself. Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1303. To that end, adopted letters or similar designations may be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. However, when such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization. See TMEP §1304.08(c); In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984) (registration properly refused where use of the mark on specimen indicated award of a degree or title, and not membership in collective entity). See also In re National Society of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972). Cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re National Association of Purchasing Management, 228 USPQ 768 (TTAB 1986); In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985).

Here, registration is sought for a certification mark. As such, although the proposed mark may indicate qualifications or achievements of a person, where it does not relate to certifying the services the person provides, it does not function as a certification mark. In re National Ass’n of Purchasing Management, 228 USPQ 768 (TTAB 1986); In re National Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983). Upon further review of the application and specimens provided by the applicant, the proposed mark does not function as a certification mark but merely as a title/degree. Pivotal in this case is whether the mark relates to certifying the services the person provides.

As displayed on the specimens, the mark does not function as a certification mark. Instead, the specimen shows that particular individuals have obtained qualification as CERTIFIED SENIOR CRIME SCENE ANALYST and not in a manner to certify the services performed by these individuals. Here, the specimens includes a course description sheet, a letter, and qualification standards issued by the applicant. However, the mark appears within the credential information for an instructor on the course description sheet and the signor on the letter, thus denoting titles/degrees earned by the sample individuals. Moreover, the certification statement provided by the applicant indicates that the marks is used to identify a title and/or degree. Here, the certification statement indicates that the marks is used by authorized persons to certify that the perms have met applicant’s standards of competence. As such, the mark is not properly used as a certification mark. As noted in the case In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (2007), the Trademark Trial and Appeal Board clarified proper certification usage in explaining that when an applicant seeks registration of a certification mark, it is the use by persons other that the owner of the mark yet subject to the owner’s control that is the primary consideration in assessing how the relevant public would perceive the mark. Here, the record does not show use of the mark as certifying the characteristic of the services but that certain individuals have been issued certificates for their training.

It is noted that the applicant argues that the record sufficiently show certification use. However, the record does not support this claim because as noted above course description and letter do not show proper certification usage. Furthermore, because the standards are produced and used by the applicant, they do not show how a person other than the applicant uses the mark to certify regional or other origin, quality, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. §2.56(b)(5).

Finally, it should be noted that here, the services are described as criminal investigation services. However, the record does not show use of the mark in relation to the services. Instead, the applicant has merely shown use on how to become qualified to perform criminal investigation services under the Certified SENIOR CRIME SCENE ANALYST designation and individuals that have been conferred the designation.

For the reasons above, the refusal is now made FINAL under Trademark Act Sections 1, 2, 4 and 45, 15 U.S.C. §§1051-1052, 1054 and 1127, for failure to function as a trademark as used on the specimens of record. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).

REQUIREMENT – Unacceptable Specimen of Use

The applicant was previously advised that the specimen is not acceptable because it does not show use of the applied-for mark as a certification mark. Trademark Act Sections 1, 2, 4 and 45, 15 U.S.C. §§1051-1052, 1054, 1127; 37 C.F.R. §2.56(b)(5); TMEP §§1306.06(a) and (c). Moreover, it was also noted that pending a proper response, registration was refused because the specimen does not show the applied-for mark in use in commerce as a certification mark for the goods and/or services in the application. 15 U.S.C. §§1051-1052, 1054, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56;TMEP §§1306.06(a) and (c), 904.07(a). The applicant has now responded to the prior action and now provides addition requirement for certification has used by the applicant. However, for the reasons below, the specimen requirement has not been satisfied.

It is noted that a certification mark specimen must show how a person other than the owner uses the mark to certify regional or other origin, quality, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. §2.56(b)(5). Here, the specimens do not show proper certification mark use because they do not show use for certification of the services rendered. Instead, the original specimen merely shows use of the mark as a title/degree. In addition, the substitute specimen does not show use by someone other than the applicant or certification for the services rendered. Please note that a certification mark specimen must show how a person other than the owner uses the mark to certify regional or other origin, quality, or other characteristics of that person’s services; or that members of a union or other organization performed the work or labor on the services. 37 C.F.R. §2.56(b)(5).

For the reasons above, the requirement and refusal are now made FINAL.

OPTIONS

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/ingrideulin/

Ingrid Eulin

Law Office 111

(571) 272-9380

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.