| To: | American Management Association Internat ETC. (trademarks@powleygibson.com) |
| Subject: | U.S. Trademark Application Serial No. 88582293 - AMA AMERICAN MANAGEMENT ASSOCIATION - N/A |
| Sent: | October 02, 2019 05:00:18 PM |
| Sent As: | ecom123@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88582293
Mark: AMA AMERICAN MANAGEMENT ASSOCIATION
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Correspondence Address: |
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Applicant: American Management Association Internat ETC.
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Reference/Docket No. N/A
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: October 02, 2019
SUMMARY OF ISSUES
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).
IDENTIFICATION OF SERVICES AMENDMENT REQUIRED (PARTIAL)
REQUIREMENTS PERTAIN ONLY TO THOSE SERVICES
AND CLASSES SPECIFIED HEREIN
The wording "Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of business management" in the identification of services is indefinite and must be clarified because the wording, as written, does not make clear that applicant is providing testing services for a separate, third party consumer rather than testing individuals as a part of its business operations. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording "providing…prerecorded online audio and video programs in the field of business management via the Internet" in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass the provision of downloadable programs in Class 9 or the provision of non-downloadable online programs as a service in Class 41.
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold, underline, and strikethrough).
Class 16: [no amendment required]
Class 41: Educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and non-downloadable prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management; educational services, namely, the development and offering of educational programs and exams in the field of business management
Class 42: Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of business management to the order and specification of ____________ {indicate accrediting bodies or certification boards}
SCOPE ADVISORY
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least four (4) classes; however, applicant submitted a fee(s) sufficient for only three (3) class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “AMERICAN MANAGEMENT ASSOCIATION” and “CERTIFIED PROFESSIONAL IN MANAGEMENT” because it is not inherently distinctive. This wording is, at best, merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services or geographically descriptive of the origin of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence shows the wording “CERTIFIED PROFESSIONAL IN MANAGEMENT” means “One who earns a living in” or “an expert” in “control[ling] or direct[ing] a business or other enterprise” who has been “guarantee[d] to have met a standard”. See attached definitions from Ahdictionary.com. Applicant’s educational products and services are specifically directed at management professionals, as indicated by applicant’s identifications of goods and services. Thus, this terminology immediately communicates the intended audience of applicant’s goods and services and must be disclaimed.
The terms “MANAGEMENT ASSOCIATION” merely identifies applicant as an organized bod of people who have a common purpose or a society engaged in matters relating to the control or direction of businesses or corporate enterprises. This message is confirmed by applicant’s identification of goods and services, which indicate that applicant is engaged in such activities. This wording, therefore, is merely descriptive, or in the case of “ASSOCIATION”, generic for, applicant’s goods and services and must be disclaimed.
Finally, the nondistinctive wording “AMERICAN” is primarily geographically descriptive of the origin of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). When “AMERICA” or “AMERICAN” appears in a mark such that it primarily denotes the country of the United States as the origin of the goods and/or services, then the primary significance is as a geographic location. See In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); Am. Diabetes Ass’n, Inc. v. Nat’l Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982); TMEP §1210.02(b)(iv).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “AMERICAN MANAGEMENT ASSOCIATION” and “CERTIFIED PROFESSIONAL IN MANAGEMENT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
MARK DESCRIPTION AMENDMENT REQUIRED
The following description is suggested, if accurate: The mark consists of the stylized letters “AMA” in which the first “A” contains a triangle design, over the words “AMERICAN MANAGEMENT ASSOCIATION” in stylized letters to the left of a single vertical line. To the right of the line are stylized words “CERTIFIED PROFESSIONAL IN MANAGEMENT”.
RESPONSE GUIDELINES
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
Kathleen Schwarz
Kathleen H. Schwarz
/Kathleen H. Schwarz/
Examining Attorney
Law Office 123
571-272-2460
kathleen.schwarz@uspto.gov
RESPONSE GUIDANCE
