United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88480516
Mark: CERTIFIED TECHNICIAN - SUPPLY CHAIN
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Correspondence Address: PILLSBURY WINTHROP SHAW PITTMAN, LLP
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Applicant: The Manufacturing Skill Standards Counci ETC.
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Reference/Docket No. 54033-505406
Correspondence Email Address: |
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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 19, 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).
REFUSAL – MERELY DESCRIPTIVE
Applicant’s mark is CERTIFIED TECHNICIAN – SUPPLY CHAIN AUTOMATION for “installation, repair, maintenance,servicing, and troubleshooting of the automation equipment and computersoftware used in factories, distribution centers and warehouses” in Class B.
CERTIFIED is defined as “having earned a certification.” TECHNICIAN is defined as “an expert in a technique.” SUPPLY CHAIN is defined as “a series of processes involved in supplying a product to someone.” Finally, AUTOMATION is defined as “the techniques and equipment used to achieve automatic operation or control.” Additionally, applicant refers to AUTOMATION in the identification. Taken together the mark means an expert, who has earned a certification, in the techniques and equipment used to achieve automatic operation or control in order to supply a product to someone. Arguably, this definition is encompassed by the applicant’s identification and certification statements.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, CERTIFIED TECHNICIAN is commonly used to describe a characteristic or purpose of services by entities similar to the applicant, i.e. an organization has certified a technician as meeting the standards of the organization. For example see the attached evidence from ASQ, AED Foundation, and ESCO Group which offer certified technician or technician certifications to those who meet their standard to be certified in the relevant field. In addition, the attached articles show that automation is becoming an increasingly important part of the supply chain field. See for example, the attached article from Inbound Logistics about supply chain automation gaining ground in the area of warehousing. Further, the attached article from Supply Chain 24/7 discusses “the supply chain technician” as being an emerging career. Thus, “CERTIFIED TECHNICIAN” and “SUPPLY CHAIN AUTOMATION” are often used in the marketplace to describe a characteristic or purpose of services similar to the ones applicant intends to be certifying under the mark CERTIFIED TECHNICIAN – SUPPLY CHAIN AUTOMATION.
Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Advisory – Amendment to Supplemental Register Not Available
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Advisory – Amendment to Supplemental Register Requires Disclaimer
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “CERTIFIED TECHNICIAN” and “AUTOMATION” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
REQUIREMENT – IDENTIFICATION
Applicant may substitute the following wording for the incorrect spelling, if accurate:
Class B:
Installation, repair, maintenance, servicing, and troubleshooting of the automation equipment and computer software used in factories, distribution centers and warehouses
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.
REQUIREMENT – CERTIFICATION STATEMENT
The wording “c certifier certifier” in the identification of services appears to be misspelled and/or is unintentionally repeated; this must be corrected or the wording further clarified. TMEP §1306.03(a).
Applicant may substitute the following wording for the incorrect spelling, if accurate:
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that individuals have demonstrated an ability to install, repair, maintain, service, and troubleshoot the automation equipment and computer software used in factories, distribution centers and warehouses based on a written exam administered by the certifier.
Amendments that would materially alter the certification statement are not permitted. 37 C.F.R. §2.71(e).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
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
/Sean O'Tormey/
Sean O'Tormey
Examining Attorney
Law Office 111
(571) 272-3081
sean.otormey@uspto.gov
RESPONSE GUIDANCE