Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 09, 2020

 

This letter responds to applicant’s communication filed on 12/16/2019.  Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.

 

Summary of Issues

 

The following requirement(s)/refusal(s) have been satisfied or withdrawn:

 

• Recitation of Services
• Certification Statement

 

The following requirement(s)/refusal(s) are now made FINAL:

 

• Specimen

 

 

 

Specimen

 

Specimen does not show use in commerce by authorized user.  Registration is refused because the specimen of record does not show the applied-for mark as actually used in commerce by the authorized users whose goods and/or services applicant certifies.  Trademark Act Sections 1, 4, and 45, 15 U.S.C. §§1051, 1054, 1127; see 37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(b)(5); TMEP §§904.07(a), 1306.02(a)(i)(B).  A certification mark specimen must show how an authorized party other than the owner actually 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 this case, the specimen consists of a “sample of certificate provided to persons who successfully complete applicant's certification program showing applied-for mark in connection with certification.”  The specimen shows use by applicant but not by an authorized user.  Additionally, the specimen is a sample and does not show use as actually used in commerce. 

 

Response options.  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 the amendment to allege use and (b) shows the mark actually used in commerce by an authorized user as a certification mark 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. 

 

Examples of specimens.  Specimens for services include brochures, advertisements, or webpages.  See id.  Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).  In all cases, the specimen must show use of the applied-for mark by authorized users to indicate that the goods and/or services have been certified.

 

(2)       Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen. 

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

 

 

 

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kyle Christopher Peete/

Trademark Attorney  [Law Office 112]

(571) 272-8275 (Phone) 

(571) 273-8275 (Fax)

kyle.peete@uspto.gov

 

 

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 09, 2020 for

U.S. Trademark Application Serial No. 88427530

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kyle Christopher Peete/

Trademark Attorney  [Law Office 112]

(571) 272-8275 (Phone) 

(571) 273-8275 (Fax)

kyle.peete@uspto.gov

 

 

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 09, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”