To: | Meyer, Adam (angela@gwpatent.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88231981 - CERTIFIED - N/A |
Sent: | 4/16/2019 4:41:58 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88231981
MARK: CERTIFIED
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Meyer, Adam
|
|
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: 4/16/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “CERTIFIED” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a quality, characteristic and feature, of applicant’s goods. 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).
The attached evidence from Merriam Webster Online Dictionary shows this wording means “having earned certification” and “genuine, authentic”. Thus, the wording merely describes a feature of applicant’s goods, namely, a feature of applicant’s goods is that they have “earned certification” or they are “genuine and authentic”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CERTIFIED” 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.
Applicant must also respond to the requirement set forth below.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Specifically, applicant has classified “paint primers” in International Class 10; however, the proper classification is International Class 2. Therefore, applicant may respond by (1) adding International Class 2 to the application and reclassifying these goods in the proper international class, (2) deleting “paint primers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification, if accurate (additions are shown in bold, comments are in bold italics):
(Add Class) International Class 2: Paints designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; paint primers; wood stains designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
(Add Class) International Class 6: Metal ceiling panels designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; Tile flooring of metal designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
(Add Class) International Class 9: Ovens for laboratory use designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
International Class 10: Sensory reduction device, namely, sensory light therapy unit
(Add Class) International Class 11: Lighting fixtures designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; HVAC units designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; Faucets designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; Refrigerators designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; Baking ovens designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
(Add Class) International Class 17: Sound control flooring underlayment designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
(Add Class) International Class 19: Non-metal floors designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input; Non-metal ceiling panels designed to lessen the destructive nature of over stimulation in children seeking reduced sensory input
International Class 35: Business consulting services in the field of promoting the goods and services of others by providing a website featuring product information, product reviews, links to the retail websites of others, and residential and commercial construction projects based on a designed matrix point system to reduce sensory input
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least eight (8) classes; however, applicant submitted a fee(s) sufficient for only two (2) classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
Portaro, Alexandra
/Alexandra Portaro/
Trademark Examining Attorney
Law Office 126
(571) 270-3924
Alexandra.portaro@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.