To: | 3HO Foundation International (skhalsa@khalsallc.com) |
Subject: | U.S. Trademark Application Serial No. 88619248 - IKYTA - N/A |
Sent: | December 18, 2019 01:52:48 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88619248
Mark: IKYTA
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Correspondence Address:
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Applicant: 3HO Foundation International
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Correspondence Email Address: |
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NON-FINAL 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 18, 2019
The undersigned trademark examining attorney has reviewed the referenced application. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Registration Refused – Failure To Function
The applied-for mark, as shown on the specimen, does not function as a service mark because it is used only on page 2 to identify applicant as an organization. It is not used as a source indicator for applicant’s services. Additionally, the use in the caption at the top of each specimen page is not acceptable to show service mark use because that is information inserted by the browser and does not show use by applicant.
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).
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.
Applicant Must Amend The Identification
Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the services. Further, it is overly broad because it encompasses services in more than one international class. Specifically, applicant must indicate what is meant by “supporting the growth and development of kundalini yoga teachers.”
The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that
appears within brackets offers guidance. And wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in standard font, not
in bold, italics or strikethrough or within brackets.
Applicant may adopt the following identification, if accurate:
“Supporting the growth and development of kundalini yoga teachers, namely, {specify what these services are},” [classification depends on what the services are];
“Association services, namely, promoting the interests of and supporting the growth and development of kundalini yoga teachers,” in International Class 35; and
“Supporting the growth and development of kundalini yoga teachers, namely, providing classes in the field of kundalini yoga,” in International Class 41.
For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.
Multi-Class Application Requirements
The application references services based on use in commerce in more than one international class. Therefore, applicant must satisfy all of the requirements below for each international class:
(1) List the 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 fee already paid (view the current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least two classes. However, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Classes 35 and 41 if applicant is able to overcome the failure to function refusal and maintain the Section 1(a) basis. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that, “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant Must Submit An Additional Processing Fee
Applicant filed a TEAS Plus application that identified services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format. However, applicant inserted wording in the identification that is clearly inappropriate. Specifically, applicant chose the following identification: Association services, namely, promoting the interests of {indicate specific group, e.g. mathematicians, skydivers, authors}. In the space intended for the specific group, applicant inserted the wording “of and supporting the growth and development of kundalini yoga teachers.” “Supporting the growth and development of” is inappropriate because it is not a group but rather are different services.
At the time of filing, a TEAS Plus application must include an identification from the ID Manual. TMEP §819.01(g); see 37 C.F.R §2.22(a)(8). By inserting inappropriate wording, applicant has failed to submit an identification from the ID Manual. See TMEP §819.01(g).
Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125. See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04. The additional fee is required even if applicant later satisfies this requirement by properly filling in the blank or deleting the unacceptable wording in the identification. TMEP §819.01(g).
Applicant is invited to contact the assigned examining attorney with any questions regarding this action.
Trademark Examining Attorney
Law Office 115
571-270-1528
katherine.chang@uspto.gov
RESPONSE GUIDANCE
· If needed, find contact information for the supervisor of the law office referenced in the signature block.