To: | Baker Tilly Virchow Krause, LLP (madipdocket@michaelbest.com) |
Subject: | U.S. Trademark Application Serial No. 88373100 - ARC - 093213-9015 |
Sent: | May 08, 2020 10:39:58 AM |
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. 88373100
Mark: ARC
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Correspondence Address: ONE SOUTH PINCKNEY STREET, SUITE 700
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Applicant: Baker Tilly Virchow Krause, LLP
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Reference/Docket No. 093213-9015
Correspondence Email Address: |
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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: May 08, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SPECIMEN REFUSAL
Specimen does not show use of the mark in commerce. Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 42. 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(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the statement of 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).
Specifically, the specimen shows the Baker Tilly website advertising the applied-for services as “Baker Tilly’s Advanced Revenue Cycle (ARC) platform”. Here, the applied-for mark “ARC” is only shown as an acronym for the descriptive wording “Advance Revenue Cycle” platform, and the wording “Baker Tilly” is shown being used as the source-indicating service mark because it is used on the website in the top left corner, where trademarks and service marks usually appear. Furthermore, the wording “ARC” is buried in the text of the specimen description of the applicant’s services, as “Baker Tilly’s Advanced Revenue Cycle (ARC) platform helps healthcare provider organizations…” The heading “How does ARC improve your process” does not sufficiently show the applied-for mark being used as a service mark because a consumer would understand “ARC” to merely be an abbreviation for “Advanced Revenue Cycle”. Therefore, the wording “ARC” is not shown on this specimen being used in a way that appropriately indicates the source of the applied-for Class 42 services as coming from the “ARC” brand, because “ARC” is used only as an acronym of descriptive wording and the mark “Baker Tilly” is used as the source of the services.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response option. Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the services identified in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
How to respond. Click to file a response to this nonfinal Office action.
Alexandra Foster
/Alexandra Foster/
Trademark Examining Attorney
Law Office 117
(571) 272-5111
alexandra.foster1@uspto.gov
RESPONSE GUIDANCE