UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/17/2019

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.  Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.

 

Search Results

 

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).

 

Summary of Issues

 

• Specimen
• Recitation of Services
• Certification Statement

 

 

Specimen

 

Registration is refused because the specimen of record does not show the applied-for mark in use in commerce as a certification mark.  15 U.S.C. §§1051-1052, 1054, 1127; see 37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(a), (b)(5); TMEP §§904.07(a), 1306.02(a)(i)(B), 1306.04(c).  A certification mark specimen must show how an authorized party other than the owner uses the mark in commerce to certify “regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services.”  37 C.F.R. §2.56(b)(5); TMEP §1306.02(a)(i)(B).

 

In the present case, the specimen consists of what appears to be applicant’s website which discusses the certification; however, a certification mark specimen must show how an authorized party other than the owner uses the mark in commerce.  

 

Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b).

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows an authorized party using the applied-for mark in commerce as a certification mark for the goods and/or services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for services may include brochures, advertisements, website printouts or other matter indicating that the services have been certified.  See id. 

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement:  “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Note:  When submitting a verified substitute specimen, the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.”  37 C.F.R. §2.45(a)(4)(ii)(C), (b)(2); TMEP §1306.02(a)(ii), (b)(i); see 37 C.F.R. §2.35(b)(1).

 

Applicant may amend to Section 1(b) using the TEAS response form as follows:  (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement:  “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).”  Note:  When amending to Section 1(b), the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Recitation of Services

 

Applicant must identify with greater specificity the goods and/or services being certified.  See 37 C.F.R. §2.45(a)(2); TMEP §1306.02(c).  The application lists the goods and/or services as follows: 

 

• Services conforming to certification standard(s) as indicated by a Certification Mark. 

 

This is not sufficiently specific because it does not specify the services to be certified.  Applicant may amend this wording to adopt the following, if accurate:

 

• Business management of hotels
• Business education and training services, namely, providing classes in the field of hospitality revenue management.

 

The identification of goods and/or services must describe the goods and/or services of the party who will receive the certification rather than the activities of the certifying organization.  TMEP §1306.02(c).    General kinds of goods and services, such as “produce,” “beef,” “fabric,” “dry cleaning services,” or “dental services,” are usually acceptable.  However, if the certification program itself is limited to specific goods and/or services, then the identification in the application should be more specific.  Id.  The identification should not include the wording “certification,” “certify,” or “certifies.”  Id.

 

The identification of goods and/or services being certified is different from the certification statement that specifies what aspect of the goods and/or services is being certified (e.g., that the work performed was done by a union, that the goods come from a particular geographic place, that the goods or services are of a specified quality).  See TMEP §§1306.02(c), 1306.03(a).

 

 

Certification Statement

 

The certification statement is not clear and clarification is required.  Applicant must amend the certification statement, the statement in the application that specifies what the applicant is certifying or will be certifying about the goods or services, to state with greater specificity the feature(s) or characteristic(s) of the goods and/or services that are or will be certified.  See TMEP §1306.03(a). 

 

The certification statement should specify all the characteristics or features of the goods and/or services that the mark certifies or is intended to certify.  TMEP §1306.03(a).  A mark does not have to be limited to certifying a single characteristic or feature.  Id.  The characteristics or features that the mark certifies or is intended to certify should be explained in reasonable detail.  Terms such as “quality,” “mode of manufacture,” or “excellence” should not be used without further explanation because they are too broad and do not accurately reveal what characteristics or features are being certified or intended to be certified.  Id.

 

The following format is suggested:

 

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods and/or services provided have “have hospitality students have an understanding of the core principles of hotel revenue management as defined by the certifier.”  {Clarify this wording}

 

To provide the certification statement in the TEAS response form:  Answer “yes” to TEAS wizard question #3; under the “Additional Statement(s)” section, check the box next to “Miscellaneous Statement;” and enter the certification statement in the text box below.

 

 

 

 

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.  

 

 

 

/Kyle Christopher Peete/

Trademark Attorney  [Law Office 112]

(571) 272-8275 (Phone) 

(571) 273-8275 (Fax)

kyle.peete@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/17/2019 FOR U.S. APPLICATION SERIAL NO. 88427530

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/17/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.