To: | American College of Veterinary Dermatolo ETC. (mathew@temmermanlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88063735 - BOARD CERTIFIED VETERINARY - 464.01 |
Sent: | 2/1/2019 8:36:12 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88063735
MARK: BOARD CERTIFIED VETERINARY
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: American College of Veterinary Dermatolo ETC.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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.
ISSUE/MAILING DATE: 2/1/2019
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.
This application was approved for publication on December 27, 2018. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
SUMMARY OF ISSUES:
Applicant provided a 2(f) Claim of Distinction to overcome the 2(e)(1) Primarily Merely Descriptive Refusal. However, after further review it has been determined that a five-years use claim, is insufficient to establish 2(f) in this case. BOARD CERTIFIED is generic and VETERINARY DERMATOLOGIST is a generic job title. Put together as a phrase the mark “BOARD CERTIFIED VETERINARY DERMATOLOGIST” is highly descriptive if not generic. The entire mark, as a phrase appears hundreds of times in a Google search indicating that the mark is indeed generic. The provided specimens show generic use. Therefore, the 2e1 Primarily Merely Descriptive Refusal has been reinstated. See TMEP 1212.05(a) and 1212.06(b) & (c).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s proposes the mark BOARD-CERTIFIED VETERINARY DERMATOLOGIST for “development, administrating, examining, certifying, and overseeing of veterinary dermatology specialty training for veterinarians; sponsoring research advancing the understanding of veterinary dermatology; sponsoring and providing veterinary dermatology education to practicing veterinarians, including under-served areas across the globe; providing to pet owners educational information in the field of dermatology.”
In the present case, the wording “BOARD CERTIFIED” is merely descriptive of, or generic for, certification marks in general, as it merely conveys to consumers that the person using the mark has received some type of certification, meaning they have met official requirements/standards set out by a group of persons with managerial, supervisory, or advisory powers. As shown by the attached third-party registrations previously attached from the Office’s X-Search database, this phrase is frequently disclaimed from certification marks, which indicates that this wording is consistently treated by the Office as being at least descriptive of, if not generic for, certification marks.
In regard to the term, “VETERINARY DERMATOLOGIST,” it is defined as “[those] who have expertise and specialized training in the diagnosis and treatment of animals with benign and malignant disorders of the skin, hair, ears and nails.” Please see prior attachment.
The above term is descriptive/generic for the individuals providing the services being certified by applicant. As the referenced attachment online explanation of “Veterinary Dermatologist” indicates, this wording is used to refer to any person who has special knowledge and skill in the particular field or subject. The application indicates that the certified services are in the field of dermatology. Therefore, the proposed mark merely conveys to consumers that the person rendering the services have expertise and specialized training in the diagnosis and treatment of animals with benign and malignant disorders of the skin, hair, ears and nails, and that this expertise has been certified by a third party, such as the applicant.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are highly descriptive and/or generic of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).
Therefore, based on the above analysis, the proposed mark must be refused as descriptive under Trademark Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
SPECIMEN REFUSAL
There is a problem with the specimen showing use.
The applied-for mark, as shown on the specimen, does not function as a service mark because the mark as used fails to function as a certification mark. The “mark” is buried in a block of text, is not highlighted or set apart in any manner and would be perceived as purely informational.
Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
CERTIFICATION STATEMENT
There is a problem with the certification statement
The certification statement is indefinite because it does not specify the characteristics certified. See TMEP 1306.06(g)(i) regarding the need to describe the characteristics or features that the mark certifies. Based on the provided standards, the following may be adopted if accurate:
The certification mark, as used by persons authorized by the certifier, certifies that the services provided are performed by a person who has met the standards and requirements established by the certifier with respect to experience, educational requirements, and passage of examinations given by the certifier.
IDENTIFICATION STATEMENT
There is a problem with the identification of the goods or services.
The identification describes the activities of the certifier. The identification of goods or services in a certification mark application must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certification mark. TMEP §1306.02(c). Based only on the identification of services as currently set forth, the following may be appropriate:
Veterinary dermatology services. Class B.
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.
/C. Dionne Clyburn/
C. Dionne Clyburn
Trademark Examining Attorney
Law Office 110
571-272-9358
dionne.clyburn@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.