NOTE TO THE FILE
SERIAL NUMBER: 88693022
DATE: 07/27/2020
NAME: kaurand
NOTE:
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Monday, July 27, 2020 2:03 PM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>; Reyes Lozoya <RLozoya@sheppardmullin.com>
Subject: RE: Act, Inc. Certification Marks
Hi Kyle,
You are correct. My oversight. Thank you for catching it. Please put it back in.
Best regards,
Michelle
Michelle D. Kahn | Partner
+1 415-774-2953 | direct
MKahn@sheppardmullin.com | Bio
SheppardMullin
Four Embarcadero Center, 17th Floor
San Francisco, CA 94111-4109
+1 415-434-9100 | main
www.sheppardmullin.com | LinkedIn | Twitter
From: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Sent: Monday, July 27, 2020 10:43 AM
To: Michelle Kahn <MKahn@sheppardmullin.com>
Cc: Jessica Wright <JWright@sheppardmullin.com>; Reyes Lozoya <RLozoya@sheppardmullin.com>
Subject: RE: Act, Inc. Certification Marks
Hey Michelle,
Only thing that we talked about on the phone, can we add that language back in at the end that says “provided to an employer by individual employees or prospective employees”? So,
The rendering and performance of workplace services in the nature of business management services, business administration services, financial operations services, architecture, construction and engineering services, Information technology services, agriculture services, namely, contract farming for others; natural resource services, namely, natural resource management and research in the field of natural resources; food preparation and serving services; arts services, namely, graphic art design;, entertainment services, namely, media production services for film, television and theatrical performances;, media services, namely, media relations and media production services; communications services namely, telecommunications services; education and training services, government relation services; public administration services; health science services; hospitality and tourism services; human resource services; legal services; public safety services in the nature of firefighting, police and civil protection services; corrections penal services, namely, providing correctional facilities and security services; contract manufacturing services; marketing and sales promotion for others; transportation services; logistics management services; community and social services in the nature of education courses at the primary and secondary level, public housing services and public medical clinic services; and installation, maintenance and repair services in the field of automobiles, electronics, appliances and residential and commercial buildings provided to an employer by individual employees or prospective employees who possess the necessary foundational skills in core disciplines, namely, reading, math and graphic literacy.
I think that is what helps avoid any 2(d) refusals, explaining the nature of how your client offers these services. Otherwise, I think we look good, and if it gets kicked back again you will probably be able to hear me screen all the way from D.C.
Give me the go ahead to add that highlighted bit in and I will amend the ID/Certification statement for all four marks, redo the searches (which the reviewer wanted), and get these things moving forward!
/Kyle Aurand/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
(571) 270-3039
From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Friday, July 24, 2020 7:58 PM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>; Reyes Lozoya <RLozoya@sheppardmullin.com>
Subject: Act, Inc. Certification Marks
Hi Kyle.
I hope you are well.
Please see the proposed amended services and certification statement below. I have for the most part incorporated your suggestions (set forth in the string below) or have deleted certain items. The amended language is bolded and underlined. If you agree that this will finally cure the situation, please enter an Examiner’s Amendment into the record. If you think anything is still problematic, please let me know and I will likely agree with whatever else you might suggest. Thank you for all your help and let’s hope this will finally result in publication (or re-publication as the case may be) of the 4 Certification Marks.
SERVICES
The rendering and performance of workplace services in the nature of business management services, business administration services, financial operations services, architecture, construction and engineering services, Information technology services, agriculture services, namely, contract farming for others; natural resource services, namely, natural resource management and research in the field of natural resources; food preparation and serving services; arts services, namely, graphic art design;, entertainment services, namely, media production services for film, television and theatrical performances;, media services, namely, media relations and media production services; communications services namely, telecommunications services; education and training services, government relation services; public administration services; health science services; hospitality and tourism services; human resource services; legal services; public safety services in the nature of firefighting, police and civil protection services; corrections penal services, namely, providing correctional facilities and security services; contract manufacturing services; marketing and sales promotion for others; transportation services; logistics management services; community and social services in the nature of education courses at the primary and secondary level, public housing services and public medical clinic services; and installation, maintenance and repair services in the field of automobiles, electronics, appliances and residential and commercial buildings by individuals who possess the necessary foundational skills in core disciplines, namely, reading, math and graphic literacy.
CERTIFICATION STATEMENT
\
The certification mark, as used by persons authorized by the certifier, certifies that the services are being performed by a person who meets certain standards and measures of competency set by certifier relating to necessary foundational skills to meet the needs of the employer with respect to reading, math and graphic literacy.
Kind regards,
Michelle
Michelle D. Kahn | Partner
+1 415-774-2953 | direct
MKahn@sheppardmullin.com | Bio
SheppardMullin
Four Embarcadero Center, 17th Floor
San Francisco, CA 94111-4109
+1 415-434-9100 | main
www.sheppardmullin.com | LinkedIn | Twitter
From: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Sent: Thursday, July 16, 2020 8:46 AM
To: Michelle Kahn <MKahn@sheppardmullin.com>
Subject: Act, Inc. Certification Marks
Hey Michelle,
Per our conversation, here is the language from the reviewer for the reasons the mark was pulled from publication:
The identification of services is unacceptable as indefinite because some of the terms are overly broad so that the services are vague. Identifications for certification marks may be identified less specifically than in an application for registration of a trademark or service mark. Ordinarily, it is only necessary to indicate the general category of goods and services, such as the following: food, agricultural commodities, electrical products, clothing, printed material, insurance services, machinery repair, or restaurant services. However, sufficient information must be provided to enable a comparison of goods/services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. See TMEP 1306.02(c). Suggestions and explanation is incorporated into the recitation proposed below. TMEP §1402.11.
Here is the suggested identification with “guidance”. I highlighted the spots where they want further specificity, and then I bolded and underlined my own personal additions, from trying to find broad entries in the ID manual. There is one deletion I did, that is with “sales promotion services”. I don’t know why they required a change there, “sales promotion for others” is in the ID Manual, so I would think that “marking and sales promotion services” would have been fine. I also feel like some of the categories you provided do give enough information to enable a comparison of goods/services, but the reviewer disagreed. Hopefully you can follow my highlights/personal additions:
The rendering and performance of workplace services in the nature of business management services, business administration services, financial operations services, architecture, construction and engineering services, Information technology services, agriculture services, namely, contract farming for others; natural resource services, namely, ________ (specify by common commercial name or at least broad category of services: natural resource management, research in the field of natural resources), food preparation and serving services; arts services, namely, ________ (specify by common commercial name or at least general category: graphic art design, art exhibitions), entertainment services, namely ____ (overly broad, greater specificity is required, at least general nature: media production services for film, television and theatrical performances , live dance and audio, and visual performances), media services, namely, ________ (specify by common commercial name or at least general nature: media relations, media production services); communications services namely, ________ (specify by common commercial name or at least general nature e.g. telecommunications services), education and training services, government ______ [government services is overly broad, clarify or delete: government relation services, ] and public administration services, health science services, hospitality and tourism services, human services [what are “human services”, explain/clarify or delete: human resource services], legal services, public safety services in the nature of ____ (explain: fire fighting, police and civil protection services); corrections penal services, namely, providing correctional facilities and security services, manufacturing services [overly broad, can amend to contract manufacturing), marketing and sales promotion
servicesfor others [“sales services” by itself is not a service as contemplated by the Trademark Act); transportation services; distribution [needs clarification, can amend to distribution services, namely, delivery of ____ (indicate field or type of goods e.g. clothing, auto parts), distributorship services in the field of ______ (indicated field or category of goods); logistics management services; [community and social services in the nature of _____{education courses at the primary and secondary level, public housing services, public medical clinic services, fire fighting, police and civil protection services} (– these services are overly broad explanation/clarification is needed] and installation, maintenance and repair services in the field of _____ (indicate at least general category of what is being installed and repaired: buildings, vehicles) by individuals who possess the necessary foundational skills in core disciplines, namely, reading, math and graphic literacy.
See what you can come up with, and I will look it over. Again, I felt like you did provide a general category, e.g., the repair/maintenance services. Now sure, that would encompass all types of repair services of any good (which is why I initial had added so many of the 2(d) refusals), but again, the reviewer wants more.
For the certification statement:
The identification need not be repeated in the certification statement. Statement can be rewritten as:
The certification mark, as used by persons authorized by the certifier, certifies that the services are being performed by a person who meets certain standards and measures of competency set by certifier relating to necessary foundational skills to meet the needs of the employer with respect to ____ (describe generally the foundational skills e.g. applied math, reading, graphic literacy) (I would just add “reading, math and graphic literacy” which is at the end of the ID, which maybe was in there at first and I said we didn’t need it? Regardless, lets just add those in).
One last thing, the reviewer that that this application should not have been granted a filing date, stating that no identifiable services were set forth in the identification as filed:
In an application under §1 or §44, if an examining attorney finds that the application fails to specify any recognizable goods or services, the examining attorney should have the filing date cancelled for failure to specify recognizable goods or services, under 37 C.F.R. §2.21(a)(4). See TMEP §1402.02. Since the issue was missed by pre-exam and by the examining attorney, then the procedure in TMEP §204.03 is followed: “the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing-date requirements. In such a case, the examining attorney must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary. See TMEP §1402.02. The applicant did not set forth identifiable goods/services until 6-12-2020.
This is generally a pretty high standard to say that an application should be void. My manager didn’t mention anything about voiding the application when I conducted my initial examination. But just wanted to note it for you in case this ever happens in the future. I would also add to what the reviewer said above, from TMEP 405.04: The USPTO will refund the filing fee for an application that is denied a filing date. So if an application were held “void”, you should receive your filing fee back.
In summary: the certification statement is an easy amendment. Let me know what you want to propose for the areas of the identification which need amended, and we will get it worked out.
Let me know if you have any questions,
Kyle
/Kyle Aurand/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
(571) 270-3039