Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS DEFFERED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

SUMMARY OF ISSUES:

• Further Specificity as to Services – Required
• Further Specificity as to the Certification Statement

 

FURTHER SPECIFICITY AS TO SERVICES – REQUIRED

 

Applicant must identify with greater specificity the services being certified.  See 37 C.F.R. §2.45(a)(2); TMEP §1306.02(c). 

 

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).

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

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

 

Applicant must amend the certification statement, the statement in the application that specifies what the applicant is certifying or will be certifying about the services, to state with greater specificity the feature(s) or characteristic(s) of the services that are or will be certified.  See TMEP §1306.03(a). 

 

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 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 06, 2020 for

U.S. Trademark Application Serial No. 88693119

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kyle Aurand/

Kyle Aurand

Trademark Examining Attorney

Law Office 126

(571) 270-3039

kyle.aurand@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 06, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”