Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 22, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 7, 2019 in connection with this application.  Based on information in applicant’s response, the trademark examining attorney now issues the following new requirement:  disclaimer required.  See TMEP §§706, 711.02. 

 

In a previous Office action dated March 7, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce.  In addition, applicant was required to satisfy the following requirements:  amend the certification statement and provide information as to the significance of the letters in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  amend the certification statement and provide information as to the significance of the letters in the mark.  See TMEP §713.02. 

 

Therefore, registration is refused as following.

 

SUMMARY OF ISSUES

 

            -  Specimen Refusal – Does not Show Use in Commerce by an Authorized Party

            -  Disclaimer Required

 

SPECIMEN REFUSAL – DOES NOT SHOW USE IN COMMERCE BY AN AUTHORIZED PARTY

 

Registration is refused because the specimen of record does not show use of the applied-for mark in commerce by the authorized parties whose services applicant certifies.  15 U.S.C. §§1051-1052, 1054, 1127; see 37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(b)(5); TMEP §§904.07(a), 1306.02(a)(i)(B), 1306.04(c).  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 applicant has submitted two specimens.  The first is a copy of a certificate bearing the mark; however, the certificate does not show the applied-for certification mark being used in commerce by an authorized party other than the owner to certify their services meet the applicant’s certification standards.  The second specimen consists of a screenshot of applicant’s website, where applicant sells uniform bars bearing the applied-for certification mark; however, the specimen shows use in commerce by the owner in providing certificates and selling goods bearing the applied-for mark, rather than use in commerce by an authorized party other than the owner to certify their services meet the applicant’s certification standards.

 

In the September 9, 2019 response to the Office action, the applicant argues that “tags or labels that bear the certification mark and that are supplied to the authorized users to attach to their goods or use in relation to their services . . . are acceptable specimens.”  While this is correct, the specimen still needs to show said tags and/or labels in use in commerce by an authorized party other than the owner to certify their services meet the applicant’s certification standards.  In this case, no such use in commerce by an authorized party is shown.

 

Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b).

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows an authorized party using the applied-for mark in commerce as a certification mark for the goods and/or services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for services may include brochures, advertisements, website printouts or other matter indicating that the services have been certified.  See id. 

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement:  “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Note:  When submitting a verified substitute specimen, the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.”  37 C.F.R. §2.45(a)(4)(ii)(C), (b)(2); TMEP §1306.02(a)(ii), (b)(i); see 37 C.F.R. §2.35(b)(1).

 

Applicant may amend to Section 1(b) using the TEAS response form as follows:  (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement:  “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).”  Note:  When amending to Section 1(b), the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “FO” because it is not inherently distinctive.  This unregistrable term is at best merely descriptive of a characteristic of applicant’s certification mark.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

In the applicant’s September 9, 2019 response to the Office action, the applicant indicates that the wording “FO”, is a commonly understood acronym for “fire officer” in the firefighting industry.

 

The attached Internet evidence from the websites of Wikipedia (http://en.wikipedia.org), Firehouse (www.firehouse.com), The Free Dictionary (www.thefreedictionary.com/Fire+officer), and Fire Rescue 1 (www.firerescue1.com), shows that the term “FIRE OFFICER” is not only often used to describe a high-ranking firefighter, but the term “FIRE OFFICER” is a well-known title in the firefighting industry.  Thus, “FIRE OFFICER” immediately informs consumers that the certified “firefighting services” are being performed by a person who has a responsible position in a fire fighting organization.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FO” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 22, 2019 for

U.S. Trademark Application Serial No. 88210937

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 22, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”