To: | Kelly Properties, LLC (troymailroom@hdp.com) |
Subject: | U.S. Trademark Application Serial No. 88607650 - KELLY EDUCATION - 1194-200161 |
Sent: | December 12, 2019 05:00:23 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88607650
Mark: KELLY EDUCATION
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Correspondence Address: HARNESS, DICKEY & PIERCE, P.L.C. 5445 CORPORATE DRIVE, SUITE 200
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Applicant: Kelly Properties, LLC
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Reference/Docket No. 1194-200161
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: December 12, 2019
SEARCH RESULTS
ADVISORY: Prior Pending Application – Mark Not Entitled to Register
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.
However, applicant must respond to the requirements set forth below.
In this case, applicant must disclaim “EDUCATION” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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).
Applicant’s services are “Personnel employment services; Employment agency services; Personnel employment services namely, providing teaching personnel to schools and educational districts” (emphasis added). The attached evidence from American Heritage Dictionary shows that “education” refers to a “program of instruction.” Thus, the wording merely describes applicant’s services because applicant places personnel in the field of education.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “EDUCATION” 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.
To address the issues discussed above, applicant may adopt any or all of the following identification of services, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 35: Personnel employment
placement services; Employment agency services; Personnel employment placement services namely, providing
teaching personnel to schools and educational districts
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.
Responding to this Office Action
Response guidelines. 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.
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.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE