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:  June 11, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 8, 2020.

 

In a previous Office action dated November 26, 2019, the applicant was required to satisfy the following requirement(s):  amend the identification of services and provide a substitute specimen in Class 42.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: the class 41 and 42 identifications are acceptable.  See TMEP §§713.02, 714.04.  The applicant provided a substitute specimen for the services in Class 42; however, as indicated below, a new refusal is issued because the mark fails to function on the specimens.

 

In addition, the following potential refusal has been withdrawn:  the reference to the pending application has been withdrawn.  See TMEP §§713.02, 714.04. 

 

The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the mark fails to function as shown on the specimens.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.

 

Further, the trademark examining attorney maintains requirement(s) in the summary of issues below. 

 

SUMMARY OF ISSUES:

• Identification of services
• NEW ISSUE failure to function

 

FAILURE TO FUNCTION

 

Registration is refused because the applied-for mark, as used on the specimens of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879-80 (TTAB 2017); In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043, 2048-49 (TTAB 1989); TMEP §§904.07(b), 1301.02 et seq.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the services.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1301.02.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.  See In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting In re Eagle Crest Inc., 96 USPQ2d at 1229); TMEP §1301.02. 

 

Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so.  In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02.  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services.  TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).

 

The definition of “KEYSTONE” is “the central principle or part of a policy, system, etc., on which all else depends.”  See attached dictionary definition.

 

The applied-for mark, as shown on the specimens, does not function as a service mark because the use of the wording, “Keystone” appears as part of an explanation of the applicant’s set of initiatives, or the policies on which the applicant’s services are based.  The mark appears as “Introducing Startup Genome’s Keystone,” which indicates that the term “keystone” is being used to describe certain policies under which the applicant operates, especially because the phrase, “A global set of initiatives,” appears directly below the “keystone” wording. Furthermore, the applicant’s substitute specimen is also used to highlight a “keystone,” namely, the establishment of a learning network.   

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the services.  Here, the term is used not as a service mark, but rather, it is used as an explanation about the nature of the applicant’s services. Consumers will not identify KEYSTONE as the source of the applicant’s services.

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable 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 an amendment to allege use and (b) shows proper service mark use for the services 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 must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(2)        Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c).  This includes withdrawing an amendment to allege use, if one was filed.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

To amend the basis from Section 1(a) 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 to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1). 

 

To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn. 

 

For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

 

IDENTIFICATION OF SERVICES – Class 35

 

Applicant has classified “provision of coaching services in relations to the development of business ecosystems and startup ecosystems” in International Class 35; however, the proper classification is International Class 41.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class or (2) deleting “provision of coaching services in relations to the development of business ecosystems and startup ecosystems” from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

Class 35:         Business and economic research related to the functioning and the development of business and startup ecosystems, and the provision of consulting in relation to the development of business ecosystems and startup ecosystems; business data analysis in the field of business and startup ecosystems functions and how specific business and startup ecosystems have performed; preparation of reports in relation to how business and startup ecosystems function and how specific business and startup ecosystems have performed

 

Class 41:         Providing online non-downloadable visual and audio recordings and multimedia files in the field of developing and building non-business and business communities; publication of reports in the field of business and startup ecosystems functions and how specific business communities and startup ecosystems have performed; Provision of coaching services in relations to the development of business ecosystems and startup ecosystems

 

Class 42:         No change required                 Providing online non-downloadable visual and audio recordings and multimedia files in the field of developing and Class 45:           building non-business 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.

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/rscb/

Robin S. Chosid-Brown, Esq.

U.S. Patent and Trademark Office

Law Office 102

571-272-9252

robin.chosid-brown@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 June 11, 2020 for

U.S. Trademark Application Serial No. 88587917

 

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. 

 

 

/rscb/

Robin S. Chosid-Brown, Esq.

U.S. Patent and Trademark Office

Law Office 102

571-272-9252

robin.chosid-brown@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 June 11, 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.”