Offc Action Outgoing

REPORT ON SUPPLY CHAIN COMPLIANCE

Society of Corporate Compliance and Ethics and Health Care Compliance Association

U.S. Trademark Application Serial No. 88216610 - REPORT ON SUPPLY CHAIN COMPLIANCE - 50508-0019

To: Society of Corporate Compliance and Ethi ETC. (kandresen@nilanjohnson.com)
Subject: U.S. Trademark Application Serial No. 88216610 - REPORT ON SUPPLY CHAIN COMPLIANCE - 50508-0019
Sent: October 08, 2019 02:47:41 PM
Sent As: ecom117@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88216610

 

Mark:  REPORT ON SUPPLY CHAIN COMPLIANCE

 

 

 

 

Correspondence Address: 

Katheryn A. Andresen

NILAN JOHNSON LEWIS PA

120 SOUTH SIXTH STREET, SUITE 400

MINNEAPOLIS MN 55402

 

 

 

Applicant:  Society of Corporate Compliance and Ethi ETC.

 

 

 

Reference/Docket No. 50508-0019

 

Correspondence Email Address: 

 kandresen@nilanjohnson.com

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 08, 2019

 

 

This Office Action is in response to applicant’s communication filed on 9/10/19. 

 

Applicant’s arguments against the refusal are not persuasive.

 

Therefore, there are no new issues and the following refusal(s) and/or requirement(s) in the previous Office Action are continued and made FINAL. 

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature/ingredient/characteristic/purpose/function/intended audience/etc. of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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)). 

 

Given that applicant’s goods and/or services are identified as “Downloadable electronic publications in the nature of newsletters and magazines in the field of regulatory compliance” “Printed newsletters and magazines in the field of regulatory compliance”, “Providing on-line electronic bulletin boards for transmission of messages among users concerning regulatory compliance” and “On-line journals, namely, blogs featuring content in the field of regulatory compliance; providing online newsletters in the field of regulatory compliance via e-mail” the applied for mark “REPORT ON SUPPLY CHAIN COMPLIANCE” is merely descriptive of applicant’s identified goods and/or services, because it merely describes that the goods/services feature “reports” which are detailed accounts or statements presumably in the field of supply chain compliance.   See the previously attached evidence from online dictionary definitions. 

 

See also applicant’s website/specimen of record demonstrating descriptive use of the mark in connection with the applied for goods/services. 

 

Accordingly, because applicant’s proposed mark merely describes applicant’s goods and/or services, registration of applicant’s mark is properly refused under Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

CLASS 009, 038, and 041 ADVISORY – SUPPLEMENTAL REGISTER NOT AVAILABLE

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

 

 

RESPONSE TO THIS FINAL OFFICE ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(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).

 

COMMENTS

 

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. 

 

 

 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Hsu, Fong/

Trademark Examining Attorney

Law Office 117

U.S. Patent & Trademark Office

Office:  (571) 272-2001

Fax:  (571) 272-2002

 

 

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.  

 

 

 

U.S. Trademark Application Serial No. 88216610 - REPORT ON SUPPLY CHAIN COMPLIANCE - 50508-0019

To: Society of Corporate Compliance and Ethi ETC. (kandresen@nilanjohnson.com)
Subject: U.S. Trademark Application Serial No. 88216610 - REPORT ON SUPPLY CHAIN COMPLIANCE - 50508-0019
Sent: October 08, 2019 02:47:41 PM
Sent As: ecom117@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 08, 2019 for

U.S. Trademark Application Serial No. 88216610

 

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. 

 

 

/Hsu, Fong/

Trademark Examining Attorney

Law Office 117

U.S. Patent & Trademark Office

Office:  (571) 272-2001

Fax:  (571) 272-2002

 

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 08, 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.”

 

 

 


uspto.report is an independent third-party trademark research tool that is not affiliated, endorsed, or sponsored by the United States Patent and Trademark Office (USPTO) or any other governmental organization. The information provided by uspto.report is based on publicly available data at the time of writing and is intended for informational purposes only.

While we strive to provide accurate and up-to-date information, we do not guarantee the accuracy, completeness, reliability, or suitability of the information displayed on this site. The use of this site is at your own risk. Any reliance you place on such information is therefore strictly at your own risk.

All official trademark data, including owner information, should be verified by visiting the official USPTO website at www.uspto.gov. This site is not intended to replace professional legal advice and should not be used as a substitute for consulting with a legal professional who is knowledgeable about trademark law.

© 2024 USPTO.report | Privacy Policy | Resources | RSS Feed of Trademarks | Trademark Filings Twitter Feed