To: | ACT, Inc. (mkahn@sheppardmullin.com) |
Subject: | U.S. Trademark Application Serial No. 88693022 - BRONZE - 52PK- |
Sent: | February 06, 2020 03:49:04 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88693022
Mark: BRONZE
|
|
Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP FOUR EMBARCADERO CENTER, 17TH FLOOR
|
|
Applicant: ACT, Inc.
|
|
Reference/Docket No. 52PK-
Correspondence Email Address: |
|
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: February 06, 2020
SEARCH OF OFFICE’S DATABASE OF MARKS DEFFERED
FURTHER SPECIFICITY AS TO SERVICES – REQUIRED
The application lists the services as follows:
“The rendering and performance of workplace services by individuals who possess the necessary foundational skills in core disciplines, namely reading, math and graphic literacy”.
This is not sufficiently specific because there is no clear underlying services identified. In particular, “workplace services” could practically cover any service in the business world. As such, the current identification does not sufficiently identify the services that the authorize uses will be providing.
Applicant may amend this wording to adopt the following, if accurate (additions appear in bold underline font):
The rendering and performance of workplace services in the nature of {specify the services that are actually provided by the authorized users, e.g., business management services, business valuation services, business advisory services in the field of innovation leadership, etc.} by individuals who possess the necessary foundational skills in core disciplines, namely reading, math and graphic literacy
The identification of services must describe the services of the party who will receive the certification rather than the activities of the certifying organization. TMEP §1306.02(c). General kinds of goods and services, such as “produce,” “beef,” “fabric,” “dry cleaning services,” or “dental services,” are usually acceptable. However, if the certification program itself is limited to specific goods and/or services, then the identification in the application should be more specific. Id. The identification should not include the wording “certification,” “certify,” or “certifies.” Id.
The identification of services being certified is different from the certification statement that specifies what aspect of the services is being certified (e.g., that the work performed was done by a union, that the goods come from a particular geographic place, that the goods or services are of a specified quality). See TMEP §§1306.02(c), 1306.03(a).
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.
FURTHER SPECIFICITY AS TO THE CERTIFICATION STATEMENT
The certification statement should specify all the characteristics or features of the services that the mark certifies or is intended to certify. TMEP §1306.03(a). A mark does not have to be limited to certifying a single characteristic or feature. Id. The characteristics or features that the mark certifies or is intended to certify should be explained in reasonable detail. Terms such as “quality,” “mode of manufacture,” or “excellence” should not be used without further explanation because they are too broad and do not accurately reveal what characteristics or features are being certified or intended to be certified. Id.
The following format is suggested (additions appear in bold underline font):
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 for the practice in the field of {specify the area or practice that the authorized user’s services will be provided in, e.g., business management services, business valuation services}, an indication that the workplace services are being performed by individuals with the necessary foundational skills to meet the needs of the employer.
To provide the certification statement in the TEAS response form: Answer “yes” to TEAS wizard question #3; under the “Additional Statement(s)” section, check the box next to “Miscellaneous Statement;” and enter the certification statement in the text box below.
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.
/Kyle Aurand/
Kyle Aurand
Trademark Examining Attorney
Law Office 126
(571) 270-3039
kyle.aurand@uspto.gov
RESPONSE GUIDANCE