Offc Action Outgoing

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:

THIS IS A FINAL ACTION.

INTRODUCTION

This Office action is in response to applicant’s communication filed on February 25, 2016.

In a previous Office action dated October 2, 2015, the trademark examining attorney required applicant to satisfy the following requirements: amend the identification of services; applicant was also informed that an addition of classes to the application would require a verified specimen in the new classes.

ISSUES APPLICANT MUST ADDRESS: On March 31, 2016, the trademark examining attorney and Andrew D. Price discussed the issues below. The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.

SIGNED DECLARATION

The refusal to register the applied-for mark in International Class 35 is made FINAL because applicant failed to provide a properly verified specimen showing the mark in use in commerce in Class 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i).

Applicant was previously refused registration and required to submit a verified specimen in International Class 35 to show use of the applied-for mark in commerce because a specimen for Class 35 was not provided with the original application. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

In response to each refused international class, applicant provided a specimen that appears to show use of the applied-for mark in commerce but is not verified. The USPTO cannot accept such specimen as a proper specimen of record until a verification is provided. See 37 C.F.R. §§2.34(a)(1), 2.59; In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).

Applicant may respond to this final specimen refusal by satisfying one of the following for each applicable international class:

(1) Submit a verification of the previously submitted specimen, attesting that it was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

(2) Submit a different and properly verified specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.

(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/S39.jsp.

IDENTIFICATION AND CLASSIFICATION OF SERVICES

The applicant has applied to register its mark in connection with the following:

Class 35: Professional credentialing verification services in the field of psychology, namely, verifying information regarding the skills and knowledge of licensed professionals to enable psychology professionals to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory via the compilation, verification, and forwarding of information to designated psychology licensing board or boards

Class 45: Providing an online compilation and verification service in the nature of a computer database compilation in the field of enabling psychology professionals to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory, whereby a psychology professional enters licensure application data which is compiled and forwarded to the designated psychology licensing board or boards; providing a verification service that enables psychology professionals to enter personal background credential and licensure information that will be forwarded to the designated psychology licensing board or boards in order to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory

The wording “Providing an online compilation and verification service in the nature of a computer database compilation . . .” in the identification must be clarified because it is too broad and could include services in other international classes. See TMEP §§ 1402.01, 1402.03.

Specifically, it is unclear from applicant’s wording whether applicant is applying for a passive vs. an active services. A passive service, for example, would be merely providing a database for viewing or use, in which case, the service would be classified by the subject matter of the database. On the other hand, if applicant is applying for active services, such as compiling the information in a database or managing the data or the databases, this would be classified in Class 35 unless the service was related to managing the websites hosting the database (which would be in Class 42).

Applicant may adopt any or all of the following identification suggestions, if accurate:

CLASS 35 – Professional credentialing verification services in the field of psychology, namely, verifying information regarding the skills and knowledge of licensed professionals to enable psychology professionals to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory via the compilation, verification, and forwarding of information to designated psychology licensing board or boards; Compilation of information into computer databases in the field of psychology professionals’ licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory

CLASS 42 – Providing a members-only website featuring technology which provides members with the ability to compile and verify application information that allows psychology professionals to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory, and allows member psychology professionals to enter licensure application data and forward it to the designated psychology licensing board or boards

CLASS 45 – Providing an interactive web site featuring personal background credential information for users to verify credentials of psychology professionals applying for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory, whereby a psychology professional enters licensure application data which is compiled and forwarded to the designated psychology licensing board or boards; providing a verification service that enables psychology professionals to enter personal background credential and licensure information that will be forwarded to the designated psychology licensing board or boards in order to apply for licensure, certification and/or registration in an initial, second or subsequent U.S. and/or Canadian state, province and/or territory

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

For the reasons listed above, the requirement for an acceptable identification of services is maintained and now made FINAL.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least three (3) classes; however, applicant submitted a fee sufficient for only two (2) classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.

(4) Submit a specimen for each international class. The current specimen is acceptable for classes 35, 42, and 45.

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.

(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

The fees for adding classes to a regular TEAS application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission. See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

RESPONSE GUIDELINES

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

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

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 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).

/Annie M. Noble/

Examining Attorney

Law Office 109

(571) 272-3272

annie.noble@uspto.gov

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.