Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  June 08, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 3, 2021.

 

In a previous Office action dated November 2, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1, 2, 3, and 45 Refusal for the activities not being a registrable service; and failure to show the applied-for mark in use in commerce with any of the specified services.

 

The trademark examining attorney maintains and now makes FINAL the refusals in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Sections 1, 2, 3, and 45 Final Refusal – Activity Not a Service
• Specimen Final Refusal

 

SECTIONS 1, 2, 3, AND 45 FINAL REFUSAL – ACTIVITY NOT A SERVICE

 

Registration is refused because the activities recited in the identification of services are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether the services are registrable:

 

(1)        A service is a real activity, not an idea, concept, process, or system.

 

(2)        A service is performed primarily for the benefit of someone other than the applicant.

 

(3)        A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

In this case, the description set forth in the identification of services is as follows (language particularly at issue appears in bold, underline, italicized font):

 

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   

 

These activities are not registrable services to be certified because these services, as stated in the identification, are not services that are in trade. They are merely provided from an employee (prospect or current) to an employer in the course of their employment, and thus, not provided directly to any actual consumers or the public. A certification mark is used by parties other than the owner and indicates that services, or the providers of those services, meet certain standards. See TMEP §1306.01(a). That is, the purpose of a certification mark is to inform purchasers that the services of a person possess certain characteristics or meet certain qualifications or standards established by another person. See TMEP §1306.01(b).

 

The specimens show that the person offering the services is simply offering the identified services as part of their employment, which merely benefits the employer. The specimens do not show that the service provider, either the employee or the employer, would use the applied for certification mark to certify his or her services meet a certain qualification or standard to the public.

 

Applicant states in its Office action response filed June 22, 2020, which was in response to a Section 2(d) Refusal under the Trademark Act, that its certification mark “is used specifically in connection with job applications and it functions as a certification to employers that the applicant will perform its job duties with a certain level of quality and competency in certain skill areas.” Applicant further states that its mark “is targeted to employers looking to fill an open position, while the Cited Marks are targeted to purchases of a specific type of service.” Based on the applicant’s identification of services and the clarification provided in its own response, the applied for mark is used by an employee to tell an employer that they have certain qualifications to perform their job. As a result, the applied for mark is not used to inform purchasers of services that the services they are purchasing meet certain qualifications. Thus, the applied for mark fails to function as a certification mark because there is no underlying service that is being performed or provided to consumers.

 

The applicant argues that the applied for mark is a proper certification mark.

 

The instant applicantion is one of a total of four (4) copending applications for the same certification services. Applicant has developed and administers a type of test that measures “the most necessary and in demand workplace skills”. Depending on the test taker’s score, they would be ranked (from lowest to highest ranked) either Bronze, Silver, Gold, or Platinum. The higher “level” a test taker achieves, the higher amount of foundational skills this person has for any number of types of jobs. For example, the applicant states that for “PLATINUM” this “indicates that an individual possesses the essential foundational skills required for at least 99% of jobs profiled – or surveyed – by the Applicant.”

 

The applicant grants third party prospective employees the right to use the applied for mark in the following way: the job seeker (whether a prospective employee searching for a new employer, or a current employee looking for a different role with the same employer) uses the mark to certify to an employer (whether it is a current or prospective employer) that they “will perform their duties (or perform their workplace services) at a particular level of quality or competency”. Overall, the applicant argues against the examiner’s refusal because the applicant claims that the employer is the consumer of the prospective employee’s services. Specifically, the applicant claims that the job applicants advertise to employers (the “consumer”) that they are PLATINUM certified. Applicant further reasons that job seekers advertise their services by posting resumes on various recruiting services and job boards, and the relevant purchasers of the stated services in the identification are the employers. This argument is not persuasive.

 

Applicant’s attempt to twist an employee-employer relationship into a consumer-service supplier type relationship fails to convince the examining attorney, as they are two completely different situations. As stated above, the purpose of a certification mark is to inform purchasers that the services of a person possess certain characteristics or meet certain qualifications or standards established by another person. See TMEP §1306.01(b). An employer is not a purchaser of services from their employees. An employer is a provider of services to consumers, and these services are offered by the employer through their own employees.

 

To take an example directly from the identification of services, the applicant allows the certification of “legal services”. Based on the applicant’s argument, a law school graduate is one that offers their own legal services to the firm that ultimately hires them as an associate at their law firm. But then the legal work completed by this individual is actually purchased and paid for by a client, not the firm. This makes the client, not the firm, the purchaser of the legal services. Overall, the applicant’s argument that an employee is considered a consumer that purchases the services of a prospective employee does not logically align and is not convincing.

 

The applicant’s argument further asserts that this is a proper certification mark, stating that “[t]he Examining Attorney has cited no authority which states or even suggests that employers or prospective employers cannot be consumers or purchasers of services.”

 

Further, the applicant makes references to other board decisions involving other registered certification marks. As a preliminary note, each of these cases are unpublished decisions. The Trademark Trial and Appeal Board has stated that decisions designated as not precedential are not binding upon the Board but may be cited and considered for whatever persuasive value they might have.  In re Soc’y of Health & Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018); TBMP §§101.03, 1203.02(f); TMEP §705.05.

 

In regards to CERTIFIED THERAPEUTIC RECREATION SPECIALIST, that case before the board was in regards to a generic refusal, or in the alternative that the mark was merely descriptive and the showing of acquired distinctiveness was insufficient. Thus, the board looked at the relevant public of people in the recreational therapy filed to determine if the mark was generic, not whether the mark satisfied the requirements of being a certification mark. Because this cited case involves a different refusal under the Trademark Act, it is not viewed as persuasive to the examining attorney.

 

Further, in regards to the DIAMOND CERTIFIED case, looking at the specimens submitted in this registration, the specimen appears to be a type of newspaper advertisement for the sale of windows and doors, with the mark located on the advertisement (see the attached screenshots from the USPTO database). This is an advertisement that goes out to the purchaser of window/doors, not to an employer. Thus, this situation is substantially different from the current situation and therefore, not persuasive.

 

Finally, the applicant references In re Council on Certification of Nurse Anesthetists. In this case the Board mentioned the following:

 

Applicant has stated that the certificate and brochure, in particular, are displayed by certified registered nurse anesthetists at their places of business. The certificate and brochure, along with applicant's literature concerning its standards and competency tests, serve to demonstrate that the CRNA designation would be perceived as a certification mark by the ultimate recipients of the services, namely surgical patients, and doctors and hospital administrators.

 

See In re Council on Certification of Nurse Anesthetists, , 85 U.S.P.Q.2D (BNA) 1403, 1410 (Trademark Trial & App. Bd. March 22, 2007, U.S. SN: 75722091).

 

While this case does involve a look at doctors and hospital administrators as being recipients of nurse anesthetist services, and they may in certain circumstances be viewed as employers of nurses, this case still provides differing facts than the instant case. The Board found that the record showed that the certificates in this case would be on display at the place of business where the services would be conducted, and the inclusion of the end consumer of the services (e.g., the surgical patients). In this case, the record merely reflects that the certificate would be used to show employers what certificate you have obtained. The applicant’s submitted Exhibit C, at Page 2, states under “How do I use my NCRC?”, “Show your NCRC to prospective employers…and explain to them what skills you have demonstrated by earning the certificate.” There is nothing about the certificate in the instant case being displayed at the business location where the end services are ultimately provided. Thus, the examining attorney is not persuaded by this case. 

 

Ultimately, the examining attorney maintains that an employer is not a “purchaser” of its own employees “services”, but rather the employer and employee provide services in tandem to the ultimate customer. As such, the mark fails to function, and the refusal under Sections 1, 2, 3, and 45 of the Trademark Act are continued and made final.

 

As a final note, the applicant referenced deleting the language “provided to an employer by individual employees of prospective employees”. However, this language was added by the applicant in order to avoid various Section 2(d) refusals. As the applicant explained in its June 22, 2020 Office action response, “[t]he authorized users of Applicant’s Mark use the Marks not to identify [sic] the service or to “indicate the source” [sic] of the services…applicant’s…certification has no relationship to the “identity” of the type of service or source of the service that the employee will perform in connection with the job for which it is applying.” In other words, the applicant argued and explained to the examining attorney that its mark was not used in connection with the end consumer of services, while the potential 2(d) citations did offer their mark to the end consumer. Thus, if the applicant attempted to delete this language, this would then be viewed as expanding the scope of the services in the identification.

 

SPECIMEN FINAL REFUSAL

 

Applicant was previously refused registration in International Class B because the specimens did not show certification mark use.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant responded by providing arguments that the previously submitted specimens were proper.

 

Thus, the refusal to register the applied-for mark in International Class B is now made final because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).

 

Specimen does not show certification mark use.  Registration is refused because the specimen of record does not show the applied-for mark as actually used in commerce as a certification mark.  Trademark Act Sections 1, 4, and 45, 15 U.S.C. §§1051, 1054, 1127; see 37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(a), (b)(5); TMEP §§904.07(a), 1306.02(a)(i)(B).  A certification mark specimen must show how an authorized party other than the owner actually uses the mark in commerce to certify “regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services.”  37 C.F.R. §2.56(b)(5); TMEP §1306.02(a)(i)(B).

 

In this case, the specimen consists of the following:

 

• Screenshot of a type of certificate or diploma showing that an individual has reached the “PLATINUM” level;

 

• Job postings stating that applicants achieving the “Platinum Level” is preferred; and

 

• Resumes stating that the individual has obtained “Platinum” certificate

 

The specimen does not show proper certification mark use because the specimens do not show the use of the applied for mark to certify characteristics of any services. As stated above, the applicant has clarified that the applied-for mark is used by employees in a way to certify to their employer that they will perform their job at a certain level. This is not what a certification mark does. A certification mark is ultimately certifying services that are provided to purchasers of those services. Applicant’s mark is not certifying services to purchases of services, it is certifying that an employee has qualifications to perform their job such that an employee hires them or promotes them. Again, the purpose of a certification mark is to inform purchasers that the services of a person possess certain characteristics or meet certain qualifications or standards established by another person. See TMEP §1306.01(b). An employer is not purchasing services from an employee. Therefore, based on the applicant’s specimens and further explanations in its Office action response, the specimens fail to show use of the mark as a certification mark.

 

Applicant argues in tandem with the above refusal that the certification mark specimens do inform proper purchasers of services because an employer is a valid purchaser. As the examining attorney states above, he disagrees that an employer or perspective employer is a “purchaser” of an employee’s services. As such, the examining attorney maintains that the specimens do not show proper certification mark use, and the specimen refusal is maintained and made final.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 June 08, 2021 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 June 08, 2021, 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.”