Offc Action Outgoing

BOARD CERTIFIED VETERINARY DERMATOLOGIST

American College of Veterinary Dermatology

U.S. TRADEMARK APPLICATION NO. 88063735 - BOARD CERTIFIED VETERINARY - 464.01

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

 

 

        

*88063735*

CORRESPONDENT ADDRESS:

       MATHEW J. TEMMERMAN

       TEMMERMAN LAW OFFICE

       ONE MARKET STREET

       SPEAR TOWER, 36TH FLOOR

       SAN FRANCISCO, CA 94105

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: American College of Veterinary Dermatolo ETC.

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       464.01

CORRESPONDENT E-MAIL ADDRESS: 

       mathew@temmermanlaw.com

 

 

 

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: 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:

  • 2(e)(1) Primarily Merely Descriptive Refusal
  • Specimen Refusal
  • Certification Statement
  • Amendment to the identification of Services

 

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

Registration is refused because the applied-for mark merely describes the provider of the services being certified.  15 U.S.C. §§1052(e)(1), 1054; see In re The Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403, 1410-15 (TTAB 2007) (holding CRNA, an acronym for “certified registered nurse anesthetist,” merely descriptive of nurse anesthetists certified by applicant); In re Nat’l Ass’n of Legal Sec’ys (Int’l), 221 USPQ 50, 52 (TTAB 1983) (holding PROFESSIONAL LEGAL SECRETARY merely descriptive of legal secretaries certified by applicant); TMEP §§1306.04, 1306.04(d)(ii).

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)). 

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.

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

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.

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

SPECIMEN REFUSAL

There is a problem with the specimen showing use.

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879-80 (TTAB 2017); In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043, 2048-49 (TTAB 1989); TMEP §§904.07(b), 1301.02 et seq.

 

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.

 

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 services.  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 §1301.02.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.  See In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting In re Eagle Crest Inc., 96 USPQ2d at 1229); TMEP §1301.02. 

 

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.  

 

 TEAS 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

/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.

 

 

U.S. TRADEMARK APPLICATION NO. 88063735 - BOARD CERTIFIED VETERINARY - 464.01

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 8:36:13 PM
Sent As: ECOM110@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/1/2019 FOR U.S. APPLICATION SERIAL NO. 88063735

 

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 2/1/2019 (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.

 

 


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