To: | International Code Council, Inc. (trademarks@morganlewis.com) |
Subject: | U.S. Trademark Application Serial No. 88359600 - COMMUNITY DEVELOPMENT SOLUTIONS - 107507-0059 |
Sent: | December 08, 2019 08:53:00 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88359600
Mark: COMMUNITY DEVELOPMENT SOLUTIONS
|
|
Correspondence Address: |
|
Applicant: International Code Council, Inc.
|
|
Reference/Docket No. 107507-0059
Correspondence Email Address: |
|
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: December 08, 2019
This Office Action is in reply to the applicant’s communications of December 6, 2019.
The amended identification of the services is NOT acceptable because the applicant has failed to provide the type of support services for use with its non-downloadable software in International Class 42. The application has been amended to seek registration on the Supplemental Register, and the descriptiveness refusal is withdrawn. The submitted specimen in the applicant’s Amendment to Allege Use is not acceptable because it is a prototype.
Summary of the Issues
1. Identification of the Services;
2. Specimen Refusal – Prototype.
Identification of the Services
The applicant has applied for the mark COMMUNITY DEVELOPMENT SOLUTIONS for the amended services of “Installation, implementation, maintenance and support of non-downloadable software that facilitates and enables towns, cities, states, and other governmental jurisdictions, agencies and departments to adopt, implement and enforce codes of laws and regulations appropriate for and applicable to their communities, and to track and organize information relating to such codes and regulations; Providing non-downloadable software that facilitates and enables towns, cities, states, and other governmental jurisdictions, agencies and departments to adopt, implement and enforce codes of laws and regulations appropriate for and applicable to their communities, and to track and organize information relating to such codes and regulations” in International Class 42.
The wording “support of non-downloadable software” and “Providing non-downloadable software” in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. As noted in the previous Office Action, the applicant is required to indicate the specific services that it is providing is support of its non-downloadable software. For the provision of its non-downloadable software, the applicant must indicate that it is providing temporary use of the software.
Applicant may substitute the following wording, if accurate:
“Installation, implementation, maintenance of non-downloadable software that facilitates and enables towns, cities, states, and other governmental jurisdictions, agencies and departments to adopt, implement and enforce codes of laws and regulations appropriate for and applicable to their communities, and to track and organize information relating to such codes and regulations; technical support services, namely, troubleshooting of non-downloadable software that facilitates and enables towns, cities, states, and other governmental jurisdictions, agencies and departments to adopt, implement and enforce codes of laws and regulations appropriate for and applicable to their communities, and to track and organize information relating to such codes and regulations; Providing temporary use of non-downloadable software that facilitates and enables towns, cities, states, and other governmental jurisdictions, agencies and departments to adopt, implement and enforce codes of laws and regulations appropriate for and applicable to their communities, and to track and organize information relating to such codes and regulations” in International Class 42.
TMEP §§1402.01 and 1402.03.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules. When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. However, it is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d).
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.
Applicant should note the following ground for refusal.
Specimen Refusal – Prototype
Registration is refused because the specimen in International Class 42 is a printer’s proof and thus does not show the applied-for mark in use in commerce for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(a), (g)(i). Generally, printer’s proofs are preliminary copies of documents used to make corrections before publication. Proofs are usually not disseminated to the public, and thus do not show use in commerce of the mark in connection with the identified goods and/or services. See 15 U.S.C. §1127; In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986); TMEP §§904.04(a), 904.07(a), 1301.04(a).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “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 or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
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.
If the applicant has any questions, please contact the undersigned.
/Ty Murray/
Ty Murray
Attorney Advisor
United States Patent and Trademark Office
Law Office 113
(571) 272-9438
ty.murray@uspto.gov
RESPONSE GUIDANCE