UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

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: 7/7/2016

 

 

This Office action supersedes the previous Office action issued on July 7, 2016 in connection with this application.

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated July 7, 2016.  The issue(s) raised in the previous July 7, 2016 Office action is/are as follow and is/are maintained:  Clarification regarding if the mark is a certification mark or a service mark. 

 

Further, the following refusal(s) and/or requirement(s) has/have been satisfied:  Requirement to address the Trademark Act Section 2(d) refusal to register, which has allowed this refusal to be withdrawn.  See TMEP §713.02.  However, the applicant’s arguments regarding the Trademark Act Section 2(e)(1) refusal to register are unpersuasive and this refusal to register is continued and maintained.

 

Applicant must respond to all issues raised in this Office action and the previous July 7, 2016 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a).  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

This Office action is in response to applicant’s communication filed on June 2, 1016.

 

Upon further consideration of this application, a new issue was discovered regarding whether the mark is intended to be a certification or service mark.  Please see the details below.

Unclear if Certification Mark or Service Mark Intended

The record is unclear as to whether applicant is seeking registration of a certification mark or a service mark in regard to the services in Class 42.  To permit proper examination of the application, applicant must submit additional information about the applied-for mark and specify which type of mark is intended.  See 37 C.F.R. §2.61(b); TMEP §1306.06.  The requested information must make clear what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

In addition, applicant must submit a written statement explaining the activities in which the mark is or will be used, and how the applicant is or will be involved with the mark and goods or services.  See TMEP §1306.06.

A trademark or service mark is used by the mark’s owner to indicate the source of his or her goods and/or services.  See 15 U.S.C. §1127.  A certification mark, however, is used by a person other than its owner and does not identify the source of goods or services but rather signifies that goods or services meet certain qualifications or standards.  See id.  Generally, there are three types of certification marks:

(1)  Certification marks that certify goods and/or services originate in a specific geographic region;

(2)  Certification marks that certify goods and/or services meet certain standards in relation to quality, materials, or mode of manufacture; and

(3)  Certification marks that certify members of a union or other organization performed the work or labor on the goods and/or services, or a performer meets certain standards.

TMEP §1306.01; see 15 U.S.C. §1127.

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

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. §§2.62(c), 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. Jackson/

Katina S. Jackson

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

571-273-8889 (Fax)

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/7/2016 FOR U.S. APPLICATION SERIAL NO. 86805756

 

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 7/7/2016 (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.