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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/1/2017

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

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 CLAUSE

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).

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS

 

-        Section 2(e)(1) Refusal -  Merely Descriptive

-        Identification of Services

-        Unclear if Certification Mark or Service Mark Intended

o   If Applicable: Whole Form Correction – Certification Mark

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature, characteristic, or purpose of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

 

The applicant has applied to register the mark TRUE for “Publishing of electronic publications; Publishing of reviews; Electronic publishing services, namely, publication of text and graphic works of others on all subjects featuring fact checking and rating the veracity of the content.; Provision of information relating to multimedia publishing; Publication and editing of printed matter; Publication of on-line fact checking ratings, markers, symbols, icons, and other means of verifying the truth or veracity of media content.; Publication of fact checking, veracity testing, rating, and marking to certify the accuracy of media content or information.”

 

 

The attached evidence from Merriam-Webster.Com shows the term, “true,” is defined as, “being in accordance with the actual state of affairs.” In the instant case, as indicated in the identification of services, it appears that the subject matter or purpose of the identified publishing services is to verify the accuracy of the content being published, and to publish content in the field of fact checking ratings.  Therefore, the wording merely describes a characteristic, feature, purpose, or subject matter of the identified services.

 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

 

In the instant case, the applied-for mark describes the purpose or use of the publishing services, namely, publishing electronic publications, reviews, texts, graphic works of others, all featuring fact checking and rating the veracity of content.

 

 

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

 

 

Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act.

 

 

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 informalities.

 

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because the format or nature of publication and subject matter of the publications are not specified where indicated in bold font.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant must address the required clarifications and may adopt the following identification format, if accurate: 

 

IC 041:  Publishing of electronic publications; Publishing of reviews; Electronic publishing services, namely, publication of text and graphic works of others on (indicate format, e.g., CD, DVD, on-line) featuring (indicate specific subject matter); Provision of information relating to multimedia publishing; Publication and editing of printed matter; Publication of on-line (indicate nature of publication, e.g., electronic magazines, journals) featuring fact checking ratings, markers, symbols, and icons, and other symbols relating to the veracity of the content; Publication of (indicate nature of publication, e.g., magazines, journals, printed matter) in the fields of fact checking, veracity testing, rating, and marking to certify the accuracy of media content or information.

 

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.  See TMEP §1402.04.

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

UNCLEAR IF CERTIFICATION MARK OR TRADEMARK AND SERVICE MARK INTENDED

The record is unclear as to whether applicant is seeking registration of a certification mark or a trademark and service mark.  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 how the goods operate, their salient features, and their prospective customers and channels of trade, and 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).

 

IF APPLICABLE: WHOLE FORM CORRECTION – CERTIFICATION MARK

Please complete and return the following form for a certification mark.  See 37 C.F.R. §2.45(a); TMEP §1306.  A new filing fee is not required.

 

For applications initially filed as intent to use, an applicant must complete the form below with an intent to use basis (see below under Section 7 “Basis for Application” and check “B” for the intent to use basis).  To amend this application to assert use in commerce, an applicant must file a separate allegation of use with the appropriate fee(s), among other things.  See 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

Certification Mark Substitute Application Pursuant to 15 U.S.C. §1054 – Principal Register

 

(Fill in Sections 1-7 below.  Submit Certification Standards in Section 8, if not previously submitted.  Sign and date the declaration below.)

 

(1)  U.S. Application Serial Number:

 

 

(2)  Applicant’s Name:

 

 

(3)  Applicant’s Mailing Address:

 

 

 

 

(4)  Applicant’s Entity Type:  (Check one and supply requested information.)

 

____    Individual – Citizen of (country):

 

____    Partnership – U.S. state (country, if appropriate) where organized:

 

If U.S. partnership, list all general partners by name, specify their legal entity type, and specify their national citizenship or state or country of organization or incorporation:

 

 

____    Corporation – U.S. state (country, if appropriate) of incorporation:

 

 

____    Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):

 

 

(5)  GOODS AND/OR SERVICES BEING CERTIFIED:  Applicant must list the goods and/or services on or in connection with which applicant’s authorized users use or intend to use the mark below.  (The listing should not include the words “applicant,” “certification,” “certify,” or “certifies.”)

 

 

 

 

 

 

(6)  CERTIFICATION STATEMENT:  Applicant must specify what the applicant is or will be certifying about the goods or services listed above, e.g., a particular regional origin, a characteristic or quality of the goods, the labor was performed by a particular group, etc.

 

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 and/or services provided have ________________________________________.

 

 

 

(7)  BASIS FOR APPLICATION:  (Check basis or bases which apply, but do not check both the first and second bases (A & B below) for the same goods and/or services; and supply requested information related to each basis.)

 

A  ____  Trademark Act Section 1(a) – Mark Is in Actual Use in Commerce

 

Applicant believes the applicant is the owner of the mark.  The mark is in use in commerce and was in use in commerce as of the application filing date.  Applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date.  Applicant is not engaged in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. 

 

A specimen showing how an authorized user uses the mark in commerce is submitted with this application.  This specimen shows the mark as used in commerce as of the application filing date.

 

Specify Date of First Use Anywhere by Applicant’s Authorized User:

 

Specify Date of First Use in Commerce by Applicant’s Authorized User:

 

B  ____  Trademark Act Section 1(b) – Intent to Use Mark in Commerce

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.  Applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. 

 

C  ____  Trademark Act Section 44(d) – Prior-filed Foreign Application

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.  Applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. 

 

Specify Country of Foreign Filing:

 

Specify Foreign Application Serial Number:

 

Specify Date Foreign Application Filed:

 

D  ____  Trademark Act Section 44(e) – Prior-filed Foreign Registration

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.  Applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. 

 

Specify Country of Foreign Registration:

 

Specify Foreign Registration Number:

 

Specify Registration Date:

 

 

(8)  COPY OF CERTIFICATION STANDARDS MUST BE SUBMITTED:  Applicant must provide a copy of the standards governing the use of the certification mark on or in connection with the goods and/or services listed above.  If applicant files based on actual use in commerce, these standards must be submitted with the application.  If applicant files based on an intent to use under Section 1(b), the standards should be provided with the allegation of use (amendment to allege use or statement of use).

 

 

DECLARATION:  Applicant must submit the declaration immediately below, properly signed and dated.  Submitting a declaration online using the Trademark Electronic Application System (TEAS) response form will satisfy this requirement.

 

The signatory believes that:  if the applicant is filing the application under 15 U.S.C. §1051(a), the applicant believes the applicant is the owner of the mark; the mark is in use in commerce and was in use in commerce as of the application filing date; the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date; the original specimen(s), if applicable, shows the mark as used in commerce by the applicant’s authorized users as of the application filing date; and/or if the applicant is filing an application under 15 U.S.C. §1051(b), §1126(d), and/or §1126(e), the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.  The signatory believes that to the best of the signatory’s knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods and/or services of such other persons, to cause confusion or mistake, or to deceive.  The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true. 

 

_____________________________________________________

(Signature)

 

_____________________________________________________

(Print or Type Name and Position)

 

_____________________________________________________

(Date)

 

 

ADVISORY

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

ASSISTANCE

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.

 

 

/AKhan/

Asmat Khan

Law Office 114

(571)-272-9453

asmat.khan@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/1/2017 FOR U.S. APPLICATION SERIAL NO. 87324839

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/1/2017, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/AKhan/

Asmat Khan

Law Office 114

(571)-272-9453

asmat.khan@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.