To: | Santa Catalina School (dgetz@jgrllp.com) |
Subject: | U.S. Trademark Application Serial No. 88590949 - PRESENT - N/A |
Sent: | November 22, 2019 02:58:17 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88590949
Mark: PRESENT
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Correspondence Address:
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Applicant: Santa Catalina School
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: November 22, 2019
INTRODUCTION
SEARCH OF OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES
· REFUSAL – FAILURE TO FUNCTION
· REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE
· POTENTIAL REFUSAL – PRIOR-FILED APPLICATION
REFUSAL – FAILURE TO FUNCTION
A process or system is only a way of doing something, and is not generally a service. TMEP §1301.02(e). An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark. In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984).
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely 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 §1202. 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. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). A specimen showing the applied-for mark referring solely to a process or system, and not to applicant’s services, is evidence that the relevant public would not regard the designation as a service mark. See In re Universal Oil Prods. Co., 476 F.2d at 655-56, 177 USPQ at 457.
In this case, the specimen shows the applied-for mark used solely to identify a process or system because the specimen discusses how “through the framework of PRESENT, students are led through curriculum and application of the seven dimensions of health” and how the wording “PRESENT” represents the concepts of “personal development”, “relationships and communication”, “exercise and movement”, “spirituality”, “environment”, “nutrition and hydration”, and “time for rest”. This suggests that the applied-for mark is being used solely to identify a process or system instead of the applied-for services of “Educational services, namely, providing courses of instruction to children at the pre-kindergarten through grade 12 level in the field of personal development, relationships and communication, exercise and movement, spirituality, physical environment, nutrition and hydration, and rest time”. Therefore, registration is refused.
Applicant should note the following additional ground for refusal.
REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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 an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified 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.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Additionally, applicant should note the following potential ground for refusal.
POTENTIAL REFUSAL – PRIOR-FILED APPLICATION
The filing date(s) of the following pending U.S. Application 88429490 precedes applicant’s filing date:
U.S. Application Serial No. 88429490 (“PRESENT” for “Mental health counseling and psychotherapy as it relates to relationships; Mental health screening services; Mental health services; Mental health therapy services; Psychiatric consultation; Psychiatric services; Psychiatric testing; Psychological assessment services; Psychological assessment services in the field of clinical psychology; Psychological consultation; Psychological counseling; Psychological counseling in the field of clinical psychology; Psychological services, namely, providing diagnostic services to children with special needs and their families; Psychological services, namely, providing therapeutic services to children with special needs and their families; Psychological testing; Psychological testing services; Psychological tests; Psychological therapy for infants; Clinical mental health counseling services; Consulting services in the field of mental health and wellness; Consulting services in the field of forensic psychology; Counseling in the field of mental health and wellness; Music therapy for physical, psychological and cognitive purposes; Personality testing for psychological purposes; Providing mental health and wellness information; Providing a web site featuring information in the field of mental health and physical health, including living a healthy and disease free life; Providing a web site featuring information in the field of mental health and wellness; Providing a website featuring information in the field of mental illness health; Providing information in the field of psychological counseling and treatment; Providing news and information in the field of mental illness health”).
· The potential refusal applies to applicant’s “Educational services, namely, providing courses of instruction to children at the pre-kindergarten through grade 12 level in the field of personal development, relationships and communication, exercise and movement, spirituality, physical environment, nutrition and hydration, and rest time” in International Class 41.
See attached referenced application(s). If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application(s).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of the above-noted prior-filed application(s). 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
CONCLUSION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Xu, Elaine/
Trademark Examining Attorney
Law Office 128
(571) 270-5297
elaine.xu@uspto.gov
RESPONSE GUIDANCE