Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88210937 FO (Stylized and/or with Design, see http://uspto.report/TM/88210937/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Office Action asserts that “the specimen of record does not show use of the applied-for mark in commerce by the authorized parties whose services applicant certifies.”  Applicant respectfully disagrees.  First, while the Office Action is correct that one of the previously submitted specimens includes a copy of a page from Applicant’s website that allows the purchase of a uniform bar bearing the instant Mark, it nonetheless includes a photograph of such uniform bar that bears the Mark.  Of course, “materials that bear the mark, and are actually . . . used in relation to the services by the persons authorized to use the mark, constitute proper specimens.  Sometimes, the owner/certifier prepares 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. . . .  These tags or labels are acceptable specimens.”  TMEP §1306.06(b).  As the previously submitted specimen provides a photograph of precisely such a tag that is provided by the Applicant (as Certifier) to authorized users to wear on their uniform when providing the certified services, Applicant respectfully submits that such specimen is entirely proper.  Even further, the second specimen previously submitted by Applicant provides a copy of a certificate issued to a certificant which is displayed by the certificant in the provision of the certified services, and thus again comprises an entirely proper specimen evidencing use of the mark by the certificant (i.e., the authorized party) in providing the certified services.  In light of the foregoing, Applicant respectfully requests reconsideration and withdrawal of the Specimen Refusal.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Please amend the certification statement as suggested in the Office Action to read as follows: The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the services provided, namely, firefighting services, have been provided by an individual that meets certain performance and quality standards established by the certifier. Further, the Office Action requires Applicant to explain whether the letters in the mark "FO" have any significance in the firefighting trade or industry or as applied to "firefighting services," or if such letters represent a "term of art" within applicant's industry being certified. In response, Applicant notes that the letters "FO" are used by members of the firefighting trade as an abbreviation for the term "Fire Officer."


SIGNATURE(S)
Response Signature
Signature: /GMS/     Date: 09/09/2019
Signatory's Name: Gregory M. Stone
Signatory's Position: Attorney of record, Maryland bar member

Signatory's Phone Number: 410-659-6402

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88210937
Internet Transmission Date: Mon Sep 09 10:11:31 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019090910113186
8915-88210937-610f07fb4a298d887aa8770eed
aaaa5999c56a42b976645962592823d3fde78cec
-N/A-N/A-20190909100900164922