Offc Action Outgoing

IFIT

Nutrasource Diagnostics Inc.

U.S. TRADEMARK APPLICATION NO. 86148492 - IFIT - 15219-34-TM8

To: Nutrasource Diagnostics Inc. (tsinnott@bereskinparr.com)
Subject: U.S. TRADEMARK APPLICATION NO. 86148492 - IFIT - 15219-34-TM8
Sent: 3/27/2014 9:05:18 PM
Sent As: ECOM104@USPTO.GOV
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

    U.S. APPLICATION SERIAL NO. 86148492

 

    MARK: IFIT

 

 

        

*86148492*

    CORRESPONDENT ADDRESS:

          TIMOTHY J. SINNOTT; BERESKIN & PARR LLP/

          40 KING STREET WEST; 40TH FLOOR

          TORONTO, ONTARIO

          M5H3Y2

          CANADA

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

 

 

    APPLICANT: Nutrasource Diagnostics Inc.

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:  

          15219-34-TM8

    CORRESPONDENT E-MAIL ADDRESS: 

          tsinnott@bereskinparr.com

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/27/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Application Filed Pursuant to Sections 1(b) and 44(d)

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b). 

 

The application includes the statement that applicant “has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce.”  However, while certifying organizations own certification marks, they grant authority to others to use their marks.  See 37 C.F.R. §2.45(b); TMEP §§1306.01(a), 1306.06(f)(iii). 

 

Therefore, applicant must amend the application to delete the inaccurate wording above and replace it with the following: Applicant has had a bona fide intention to exercise legitimate control over the use of the certification mark in commerce as of the application filing date.  See TMEP §1306.06(f)(iii). 

 

 

Certification Statement Needed

 

While the applicant submitted a certification statement, it is in the wrong format.  Please see and follow the instructions below.

The application does not include the required certification statement.  See 37 C.F.R. §2.45; TMEP §1306.06(f)(i).  Therefore, applicant must submit a certification statement specifying the characteristics, standards or other features of the goods and/or services that the mark certifies or is intended to certify. 

 

The certification statement should specify all of the characteristics or features of the goods and/or services that the mark certifies or is intended to certify.  TMEP §1306.06(f)(i).  A mark does not have to be limited to certifying a single characteristic or feature.  The characteristics or features that the mark certifies or is intended to certify should be explained in reasonable detail.  Terms such as “quality,” “mode of manufacture” or “excellence” should not be used without further explanation because they are too broad and do not accurately reveal what characteristics or features are being certified or intended to be certified.  Id.

 

The following format is suggested:

 

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods provided have been tested by the IFIT program for purity and concentration of labeled active ingredients including a proximate analysis of nutritional facts and found to comply with the following standards. The Microbial Analysis, Mercury, Heavy Metals, Residual Solvents, Banned Substances and GMO (Genetically Modified Organisms) are in accordance with the Council for Responsible Nutrition, the World Health Organization, the European Food Safety Authority, the Dieticians of Canada and safety standards for human consumption. The active ingredient concentration and proximate analysis of nutritional facts are in accordance with the product label claim.

 

Contact Information

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Katina S. Mister/

Katina S. Mister

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

571-273-8889 (Fax)

katina.mister@uspto

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  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 application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

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U.S. TRADEMARK APPLICATION NO. 86148492 - IFIT - 15219-34-TM8

To: Nutrasource Diagnostics Inc. (tsinnott@bereskinparr.com)
Subject: U.S. TRADEMARK APPLICATION NO. 86148492 - IFIT - 15219-34-TM8
Sent: 3/27/2014 9:05:18 PM
Sent As: ECOM104@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/27/2014 FOR U.S. APPLICATION SERIAL NO. 86148492

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/27/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.

 

 


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