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: 5/14/2019

 

 

This Office action is in response to applicant’s communication filed on March 4, 2019.

In a previous Office action dated September 5, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Failure to Function and Specimen Refusal. In addition, applicant was required to satisfy the following requirement:  Clarify whether the mark is certification mark or a service mark.

Based on applicant’s response, the trademark examining attorney notes that the following refusal has been satisfied: Specimen refusal.  See TMEP §§713.02, 714.04.

Further, the trademark examining attorney continues and maintains the following refusal: Failure to Function.

In addition, the examining attorney issues the following new refusals and requirements below.

 

SUMMARY OF ISSUES that applicant must address:

 

• Certification Mark Refused (New Issue)
• Identification of Services ( New Issue)
• Failure to Function as a Trademark- Generally ( New Issue)
• Failure to Function Informational (Continued and Maintained)

 

CERTIFICATION MARK REFUSED- ( NEW ISSUE)

 

Applicant was required to provide additional information about the applied-for mark and specify which type of mark was intended.  See 37 C.F.R. §2.61(b); TMEP §1306.06. Applicant responded by stating that the mark was a certification mark. However, based on applicant’s response, website and specimen, it does not appear that this is the case.

 

Applicant’s response does not show that others are authorized to use the applied-for mark and provide the applied-for services as the argument and exhibits provided both indicate that applicant utilizes and issues the applied-for mark. Specifically, applicant states that to earn an ACT NCRC credential at one of the four levels, consumers must successfully complete three ACT Work Keys assessments. Based on applicant’s Exhibit B evidence, it appears as though applicant is providing the educational training related to this credential as it is the one conducting the courses needed to pass the required assessments and ultimately the party that conveys the credential to the consumer. See Pages 16-20 of applicant’s response. It does not appear from this evidence or the rest of the exhibit that the mark is being used by other persons on their own services with authorization from applicant. For example, Exhibit A does not show standards used to determine who is authorized to use the certification mark.  See 37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1306.03(b).  It simply shows information regarding applicant’s services as the different levels of credentials are listed. None of this information shows who is authorized to use the certification mark. The remainder of Exhibit B shows how others refer to the credentials that can be obtained through ACT and even link back to applicant’s webpage. See page 30 of applicant’s response.

 

Applicant’s own website shows that it is doing more than simply promoting recognition of the program and is ultimately being used by applicant on its own serviced. On Act.com at http://www.act.org/content/act/en/products-and-services/workkeys-for-job-seekers/preparation.html and http://services.act.org/OA_HTML/ibeCCtpItmDspRte.jsp?section=10020&item=1871660&sitex=10020:22372:US&_ga=2.14123124.2126744510.1557766643-582019567.1557766643, it is clear that applicant is the party that provides the services  and issues the credentials as it provides the training materials. At most it appears that applicant allows others to provide testing facilities, but ultimately, it is applicant who provides the credentials. See http://www.act.org/content/act/en/products-and-services/workkeys-for-job-seekers/ncrc.html.

 

Lastly, a certification mark specimen must show how an authorized party other than the owner uses the mark in commerce to certify “regional or other origin, material, mode of manufacture, quality, accuracy, 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); TMEP §1306.02(a)(i)(B).

 

In the present case, the specimen consists of a certificate.  The specimen does not show proper certification mark use because it highlights the fact that applicant is using the applied-for mark on a certificate that it provides to consumers. There is nothing showing that the mark used by others on their own services.

 

In this case, applicant is performing the services in connection with which the mark is used and thus is not a certification mark.  See  TMEP §1306.01(a).

 

 

IDENTIFICATION OF SERVICES- ( NEW ISSUE)

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  These requirements for specification of the particular goods and/or services apply to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The wording “Providing an assessment-based credential which measures and certifies the essential work skills needed for success in jobs across multiple industries and occupations” in the identification of services is indefinite and must be clarified because it is unclear what type of services applicant is providing. For example, this could refer to applicant providing the service of testing, analysis and evaluation of the services of others to determine conformity with established accreditation standards, in class 42, which is an activity generally performed by the accrediting body, but may also be performed by a third party to the order and specification of the accrediting body. Please note that the act of accreditation, which is the validation or bestowal of approval on a service provider, and is not considered a service under the Trademark Act.

 

This could also refer to providing educational assessment services in international class 41.

 

The wording “advisory and consultancy services relating to workforce development programs.” in the identification of services is indefinite and must be clarified because it is unclear what type of service applicant is providing.  For example, applicant could be providing consulting services in the field of human resources development, namely, utilizing technology for the career growth of others.

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant should note that any wording in bold, in italics, underlined, and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods which should be removed, it will be shown with a line though it such as this: strikethrough. When making its amendment, applicant should enter them in standard font, not in bold, in italics, underlined, and/or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate:

 

International Class 35: Providing an assessment-based credential which measures and certifies the essential work skills needed for success in jobs across multiple industries and occupations; advisory and consultancy services relating to workforce development programs Advisory and consulting services in the field of human resources development, namely, for the promotion of programs that promote the career growth of others

 

International Class 41: Providing educational assessment services of the essential work skills needed for success in jobs across multiple industries and occupations

 

International Class 42: Testing, analysis and evaluation of the services of others to determine conformity with certification standards of the essential work skills needed for success in jobs across multiple industries and occupations

 

 

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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS  

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) 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.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            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 more information about verification.

 

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).

 

See 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.

 

FAILURE TO FUNCTION AS A TRADEMARK ( NEW ISSUE)

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

The applied-for mark, as shown on the specimen, does not function as a trademark because it simply appears as a level or performance designator on a certificate rather than the source of the applied-for services. The term “SILVER” does not appear to indicate the source of the services that resulted in the certificate presented in the specimen in the way that ACT, WORKKEYS, NCRC, or ACT WORKKEYS NCRC does because as explained in applicant’s response and the evidence the term “SILVER” is meant to merely refer to a level of achievement.  See applicant’s response at page 3. As it appears on the certificate specimen, “SILVER” indicates the type of certificate a person achieved rather than conveying to consumers that it is the name of a service.

 

In particular, Exhibit B of applicant’s response, it shows that SILVER is simply a level of the ACT WORKKEY NCRC. See page 17 of applicant’s Exhibit B. Similarly, the explanation by the Kansas WorkReady evidence at page 24 of Exhibit B shows that SILVER is understood as a level of achievement and designation of the award given to individuals. The Kentucky National Career Readiness Certification page at page 29 of applicant’s Exhibit B similarly identified SILVER as a certificate skill level and not as a source identifier of the services.

 

As seen from the attached evidence below, the term “SILVER” is routinely associated with obtaining a certain level or skillset and is not viewed as a source indicator:

 

Quality Improvement for Institutions

 

• Award Levels- Silver- http://cvquality.acc.org/NCDR-Home/registries/hospital-registries/chest-pain-mi-registry/action-registry-performance-achievement-awards

 

Ohio EPA

• The program has a four-level approach to provide recognition to Ohio organizations completing environmentally beneficial activities- Silver- http://www.epa.state.oh.us/ocapp/ohioe3#112302641-silver

 

NAR

• Participating councils are divided into four status classifications based on their level of activity: Silver, Gold, Platinum and Diamond- http://www.nar.realtor/global/global-business-councils/global-achievement-program

 

Heart.org

• Congratulations on your Workplace Health Achievement recognition and thank you for opting in to be recognized by the American Heart Association!- Silver- http://www.heart.org/en/professional/workplace-health/workplace-health-achievement-index/workplace-health-achievement-index-silver-level-recognition-and-awards-toolkit

 

As seen, this evidence shows that terms such as “SILVER” do not serve to indicate the source of a service, but rather to convey the level or status of something.  This is particularly true because these other entities utilize this term in connection with awards, similar to the specimen provided by applicant.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the goods.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). 

 

Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)).  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods.  See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.

 

Given that applicant is utilizing the applied-for mark in a manner that portrays it as a level of achievement rather than a source indicator, the applied-for mark does not function as a trademark.

 

FAILURE TO FUNCTION – INFORMATION (CONTINUED AND MAINTAINED)

 

Applicant’s arguments were found unpersuasive

 

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

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.

 

 

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.  

 

 

 

/Claudia Garcia/

Examining Attorney

Law Office 111

(571) 272-6939

claudia.garcia@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 5/14/2019 FOR U.S. APPLICATION SERIAL NO. 87917995

 

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 5/14/2019 (or sooner if specified in the Office action).  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.  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 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.