Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 12, 2019

 

The referenced application 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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:

• Section 2(a) Refusal – False Connection
• Request for Information
• Certification Statement
• Identification of Services Certified

 

SECTION 2(a) REFUSAL – FALSE CONNECTION

 

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the Consumer Product Safety Commission (CPSC).  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although CPSC is not connected with the services provided by applicant under the applied-for mark, CPSC is so well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

The U.S. government is a “person” within the meaning of Section 2(a).  15 U.S.C. §1127; FBI v. Societe: “M. Bril & Co.”, 172 USPQ 310, 313 (TTAB 1971); TMEP §1203.03(a)(i).  Accordingly, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons.  TMEP §1203.03(a)(i); see In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975).  In addition to qualifying as a “person,” U.S. government agencies and instrumentalities, as identified by their common names and acronyms, are also “institutions” within the meaning of Section 2(a).  TMEP §1203.03(a)(ii); see In re Peter S. Herrick P.A., 91 USPQ2d at 1506; In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).

 

In this case, the attached evidence from CPSC.gov shows the Consumer Product Safety Commission is a well-known government agency that identifies itself as “CPSC”.  The attached evidence from Abbreviations.com shows that “CPSC” is a known acronym for Consumer Product Safety Commission.  Here, applicant’s mark “CPSC” is identical to the well-known acronym for the government agency “CPSC”.  Additionally, the attached evidence from Google and Merriam-Webster show that the only well-known meaning of “CPSC” is the Consumer Product Safety Commission.

 

Furthermore, the application identifies applicant as The Institute For Professional Advancement, Inc., not the Consumer Product Safety Commission.  Moreover, nothing in the application shows or suggests that applicant is connected with the agency.  In addition, the services in the identification are of the type offered by United States government agencies and instrumentalities.  For example, the attached evidence from USDA, HS Gift Shop, and API Federal show that it is commonplace for government agencies to provide the “sales of products” identified by applicant in connection with their agency abbreviation.  Thus, consumers are likely to presume that the “CPSC” acronym used in connection with such sales services refers to the Consumer Product Safety Commission.    Accordingly, registration is refused under Trademark Act Section 2(a) for a false connection with the Consumer Product Safety Commission.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

REQUEST FOR INFORMATION

 

Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

Applicant should note the following additional requirement.

 

CERTIFICATION STATEMENT

 

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 by persons authorized by the certifier, certifies that the services are provided by manufacturers' representatives who have met established standards set by the certifier for acceptable sales skills on the basis of work experience, education, coursework and service to the industry.

 

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.

 

Applicant should note the following additional requirement.

 

IDENTIFICATION OF SERVICES CERTIFIED

 

Applicant must identify with greater specificity the services being certified.  See 37 C.F.R. §2.45(a)(2); TMEP §1306.02(c).  The application lists the services as follows:  sales of products by independent professional providers of field sales on behalf of product manufacturers or supplies.  This is not sufficiently specific because it fails to adequately specify the services certified.  Applicant may amend this wording to adopt any the following, if accurate:

 

• “Sales promotion of products by independent professional salespeople providers of field sales on behalf of product manufacturers or supplies;”

 

• “Sales of products by Independent professional providers of field sales representatives acting on behalf of product manufacturers or suppliers;” or

 

• “Sales of products by Independent professional providers of field sales retail store services featuring products on behalfof other product manufacturers or suppliers.”

 

The identification of services must describe the 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 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 services being certified is different from the certification statement that specifies what aspect of the 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).

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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  

 

 

/Bridget Watson/

Bridget Watson

Trademark Law Clerk

Law Office 128

(571) 272-7163

bridget.watson@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 September 12, 2019 for

U.S. Trademark Application Serial No. 88472713

 

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. 

 

 

/Bridget Watson/

Bridget Watson

Trademark Law Clerk

Law Office 128

(571) 272-7163

bridget.watson@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 September 12, 2019, 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.”