To: | Purdue Research Foundation (otcpatent@prf.org) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88022598 - CAPSTONE PLUS - 68336 |
Sent: | 1/24/2019 3:12:57 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88022598
MARK: CAPSTONE PLUS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Purdue Research Foundation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
THIS IS A FINAL ACTION.
This Office action responds to applicant’s communication dated January 18, 2019, where applicant:
(1) Amended the identification of services; and
(2) Submitted new specimens in response to the Specimen Requirement
The examining attorney has reviewed the applicant’s response and determined the following:
(1) Applicant’s amended identification of services is acceptable and made of record; and
(2) Applicant’s submitted specimens are not acceptable and the Specimen Requirement is maintained and made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES
SPECIMEN REQUIREMENT – NOT SHOWN WITH IDENTIFIED SERVICES
Applicant was previously refused registration in International Class 035 because the specimen did not show use of the mark in connection with the services identified in the application. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 035 is now made FINAL because applicant failed to provide evidence of use of the mark in commerce. 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, 1301.04(g)(i).
Specimens consisting of advertising or promotional materials must show a direct association between the mark and the services for which registration is sought. In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii). To show this direct association, the specimen must contain an explicit reference to the services, in addition to the mark being used on the specimen to identify the service and its source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimens show the mark used for a program in which the applicant connects Purdue University students to businesses in what appears to be essentially an internship program. There is nothing in the provided specimens that makes any direct or indirect mention that the applicant provides advisory services of any type for the businesses, more or less in the field of business management and operations.
To the extent that the students offer advice to the businesses that the intern for, this does not constitute a registrable service provided by the applicant because: 1) this advice is not offered directly by the applicant; and 2) even if we considered the students to be an extension of the applicant, the advice provided by the students would be merely ancillary to the primary service provided by the applicant, which is matching students and businesses for internship opportunities. TMEP §1301.01(a)(iii).
Furthermore, even if we considered the students to be an extension of the applicant and determined that the advice provided by the students was not ancillary to the applicant’s primary services, the type of advice provided by the students, as referenced in the specimens, is not in the field of business management, business operations, or project management. Specifically, the specimens show that they provide businesses access to students who are versed in marketing and technical design. The application specifies that the advice provided is in the field of business management, business operations, and project management. Attached evidence from the Business dictionary establishes that business management is “the activities associated with running a company, such as controlling, leading, monitoring, organizing, and planning,” business operation is “activities involved in the day to day functions of the business conducted for the purpose of generating profits,” and project management is “the body of knowledge concerned with principles, techniques, and tools used in planning, control, monitoring, and review of projects.” Nothing in the provided specimens establishes that the students are capable or trained to give any advice regarding running the business in a way that would fit within these definitions.
Therefore, the provided specimens fail to show a connection between the mark and the services because: 1) there is no direct or indirect reference to the applicant providing the services in the specimen; 2) to the extent the students provide these services, the services are not provided by the applicant; 3) to the extent that services provided by the students do represent services provided by the applicant, any such advice would be ancillary to the primary service provided by the applicant; and 4) to the extent that services provided by the students do represent services provided by the applicant, there still is no direct or indirect reference in the specimens that the students would provide advice in the fields specified in the 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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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). And, as stated above, specimens comprising advertising or promotional materials must show a direct association between the mark and the services. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457); TMEP §1301.04(f)(ii).
Applicant may respond to this 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.
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.
PROPER RESPONSE TO FINAL ACTION
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 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). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/Lyal Fox/
Lyal Fox
Trademark Examining Attorney
Law Office 113
571-270-7884
lyal.fox@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.