NOTE TO THE FILE
Sent to TICRS as Serial Number: 88198360SERIAL NUMBER: 88233326
DATE: 06/19/2019
NAME: aroach
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Roach, April
Sent: Wednesday, June 19, 2019 9:11 AM
To: 'Tricia Ann-Olson Zachary' <taozachary@ovailelawgroup.com>
Subject: RE: Request for assistance
The same mark may not be registered as service mark and a certification mark that certifies the same services.
You filed Serial No. 88198323 with the identification “educational services in the field of debt collection and credit issuing industry, namely, a specifically developed certification program that provides training on and evaluates conformance with advanced industry knowledge within the debt collection and credit issuing industry.
Then you filed 88198360 for the same mark with the identification “Educational services, namely, conducting on line and telephonic instruction and courses in the field of debt collection and credit issuing industry; Educational services, namely, conducting conferences, forums, expositions, programs, courses, on line courses, telephonic courses, seminars, legal compliance seminars and workshops in the fields of the debt collection and credit issuing industry and distribution of training materials in connection therewith; Educational services, namely, providing on-line training courses, seminars, workshops in the field of the debt collection and credit issuing industry; Educational services, namely, providing continuing professional education courses in the field of the debt collection and credit issuing industry; Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of the debt collection and credit issuing industry.”
Thus registration was refused because the applications were filed for the same mark and the same services as both a service mark and a certification mark.
Serial No. 88198323 has subsequently been amended to “Debt collection and credit evaluation” which eliminates this conflict. Assuming similar amendments have been made for the other applications you reference, this issue would be resolved.
You must still file an office action response for each of the applications that addresses the specimen and identification requirements.
April Roach
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 115
(571) 272-1092
From: Roach, April
Sent: Monday, May 20, 2019 9:36 AM
To: Tricia Ann-Olson Zachary <taozachary@ovailelawgroup.com>
Subject: RE: Request for assistance
I previously discussed these applications with my manager. He is currently out of the office, and I will be out when he returns. Thus I have made a note to review this with him when we are both back, the week of June 3.
From: Tricia Ann-Olson Zachary [mailto:taozachary@ovailelawgroup.com]
Sent: Friday, May 17, 2019 10:47 AM
To: Roach, April <april.roach@USPTO.GOV>
Subject: Request for assistance
Re: ACA International Marks
Examiner Roach:
Good morning. I am sending an email regarding several open office actions with my client ACA International, which include:
1) Serial Number 88/198360 for the service mark “IFCCE;”
2) Serial Number 88/224613 for the certification mark “International Fellowship of Certified Collection Executives;”
3) Serial Number 88/224399 for the service mark “International Fellowship of Certified Collection Executives;”
4) Serial Number 88/224494 for the certification mark “Professional Practices Management System;”
5) Serial Number 88/224370 for the service mark “Professional Practices Management System;”
6) Serial Number 88/224462 for the certification mark “Trainer Specialist;”
7) Serial Number 88/224319 for the service mark “Trainer Specialist;” and
8) Serial Number 88/233326 for the certification mark “Professional Collection Specialist.”
I am respectfully sending this email as an inquiry regarding the resolution of the element of the outstanding office actions pertaining to the concurrent registrations for the service marks and the certification marks.
My client has utilized their marks in a combined service mark and certification mark structure before. Some of the marks have slight variations and some do not. A number of these marks were assigned to Examiner Alex Foster, including serial numbers: 88/198314 (CCCP); 88/198319 (TSP); 88/198332 (PCS); 88/198328 (CCCO); and 88/198323 (IFCCE).
Examiner Foster worked with her supervisor and a certification mark specialist to assist with the marks listed above, which have all been approved for publication. I understand that there is no requirement for examiners to treat other registrations as precedent, especially within different offices, but I am emailing to respectfully request your assistance with the remaining applications that have been assigned to you.
Examiner Foster further spoke to me during the process of working through the applications assigned to her and stated that she and her supervisor were made aware of the applications assigned to you bearing nearly identical circumstances and that they spoke to you with reference to the approved marks.
I am hopeful that we might be able to utilize the efforts of your office with the approved applications to assist with these remaining applications that you are working on. This email is intended to serve as an informal request regarding any suggestions you may have as to how you would consider proceeding with the above-referenced office action.
I appreciate your time and respect any suggestions you may have. This is a novel situation that I have not dealt with before. I have dealt with concurrent use marks, but not this specific issue before.
Thank you again!
Respectfully,
Tricia Ann-Olson Zachary
OVAILE LAW GROUP
An Olson IP + Business Consulting Services Group
__________________________________
5201 Eden Avenue, Suite 300
Edina, MN 55436
Phone: 612-326-9733
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