Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 1/18/2019

 

This Denial of the Request for Reconsideration responds to applicant’s communication dated January 5, 2019, where applicant:

 

(1)  submitted an affidavit; and

(2)  submitted an additional specimen in response to the refusal of the specimens previously submitted.

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)  applicant’s affidavit cannot satisfy the requirement for a new specimen, but it is made of record; and

(2)  applicant’s specimen is unacceptable. Therefore the requirement to provide an acceptable specimen is maintained and continued.

 

Therefore, the request for reconsideration is denied, and the final refusal is maintained and continued. See 37 C.F.R. §2.64(b); TMEP 715.03(a)(2)(B), (a)(2)(E), 715.04(a).

 

APPLICANT’S REQUEST FOR RECONSIDERATION IS HEREBY DENIED

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a).  The following requirement made final in the Office action dated November 26, 2018 is maintained and continues to be final:  the requirement to provide an acceptable specimen.  See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

In the present case, applicant’s request has not resolved all the outstanding issues, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issues in the final Office action.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  The specimen submitted on January 5, 2019 consists of 10 pages. The first three pages consist of an affidavit. The fourth page consists of a cover sheet labeled “EXHIBIT A.” Pages 5 – 8 are described by the applicant as “a presentation deck that our company uses for audiences including both current and prospective school district customers.” Although the applied-for mark appears on pages 5 – 8 of the specimen submitted on January 5, 2019, it does not appear in use in commerce in connection with any of the services specified in International Class 41 in the application, namely, “Educational counseling services to assist students in planning and preparing for further education; Consulting services about education.” Page 5 discusses the “benefits” of Kinvolved. Page 6 references a guide to family partnerships. Page 7 reflects an impact report also called “A Roadmap for Improving Attendance.” And page 8 reflects an “Implementation Plan.” None of these pages references consulting services about education or educational counseling services to assist students in planning and preparing for further education. Pages 9 and 10 of the specimen are described by the applicant as a “two-page document . . . executive summary of our 2018 annual impact report[1] . . . to report on the impact of our products and services on existing customers.” Although the applied-for mark appears on pages 9 and 10 of the specimen submitted on January 5, 2019, it does not appear in use in commerce in connection with any of the services specified in International Class 41 in the application. Pages 9 and 10 discuss absenteeism and the impact that Kinvolved has on this issue. Pages 9 and 10 do not reference consulting services about education or educational counseling services to assist students in planning and preparing for further education.

In sum, the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 41 in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). 

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.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). It is not enough that the specimen shows the applied for mark and promotes some services also provided by the applicant but not identified in the application; rather, the specimen must show the mark used in connection with the services identified in the application. The association between the applied-for mark and the services identified in the application must be direct.

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 identified in the application.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services identified in the application.  TMEP §1301.04(f)(ii).

Response options for overcoming the refusal were set forth in the Priority action dated October 9, 2018 and in the Final Refusal dated November 26, 2018 wherein applicant was advised that it could respond to the refusal by satisfying one of the following for each applicable international class:

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

(2)       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.

The same two options for response described above remain available to applicant. Notably, neither option makes any reference to an affidavit. Pages 1-3 of the specimen reflect that the applicant submitted an affidavit attesting to its use of the applied-for mark in commerce. However, an applicant’s affidavit swearing that it uses the applied-for mark in commerce cannot satisfy the requirement for a new specimen. 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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a).

 

Accordingly, the request is denied.

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

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c).

RESPONDING TO THIS OFFICE ACTION

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3).  The filing of a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS

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.

 

/Dana Dickson/

Examining Attorney

Law Office 113

(571) 270-7552

dana.dickson@uspto.gov