NOTE TO THE FILE
SERIAL NUMBER: 88693139
DATE: 04/17/2020
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: Wednesday, April 1, 2020 5:03 PM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: RE: ACT Certification Marks
Thank you so much.
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: Wednesday, April 1, 2020 1:58 PM
To: Michelle Kahn <MKahn@sheppardmullin.com>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: RE: ACT Certification Marks
Hello Michelle,
I believe the identification of services and the certification statement are ok as is. I started to conduct my new 2(d) search for the applications with the updated identifications, however, due to the broad nature of the services, I have run into several potential 2(d) cites.
In regards to certification marks, the likelihood of confusion analysis is based on a comparison of the mark as applied to the services of the certification mark users. In this case, the services comparison is based on the entries in your client’s ID (which are broad), such as, business management services, construction and engineering services, educational and training services, etc., with each of these areas not containing any limitations, that leaves a wide possibility of potential 2(d) cites. For BRONZE, I have identified three possible 2(d) cites; for GOLD, I have eight possible cites; PLATINUM, I ran into numerous cites for PLATINUM (more than fifteen off the top of my head), and I have not yet gotten to the search for SILVER. In short, I want to compile a list of all the possible cites, then do a deeper dive, and then proceed from there. Due to the number of possible cites for PLATINUM, it has slowed down my progress, and I have had other cases with deadlines to get out of.
Right now, I hope that I will have a full list of possible cites finished before Monday. Then, I will likely do a second look at each of them to ensure they are valid 2(d) cites, and proceed from there.
Sorry for the length this process is taking.
Best,
Kyle
/Kyle Aurand/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
(571) 270-3039
From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Wednesday, April 1, 2020 11:09 AM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: Re: ACT Certification Marks
Hi Kyle,
I hope you are settling into the WFH reality and, most importantly, staying safe and healthy. This is a challenging collective experience in many ways.
I’m wondering if you can give me an update on how these applications are moving along. Do you require any further information regarding the services or certification statement?
I am sure you’re very busy but would greatly appreciate an update when you can provide one.
Kind regards,
Michelle
From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Wednesday, March 18, 2020 11:27 AM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: Re: ACT Certification Marks
I so appreciate it. I’m sorry you’re having difficulty. I know how frustrating that is. I look forward to hearing from you regarding the proposed amendments when you are up and running. I understand that after that issue is addressed you will be able to conduct a 2(d) search
My very best,
Michelle
Sent from my iPhone
On Mar 18, 2020, at 8:25 AM, Aurand, Kyle <Kyle.Aurand@uspto.gov> wrote:
I have read it. Definitely more along the line of what I am looking for. I am just trying to make sure that each specific entry is acceptable as is, and trying to get a second pair of eyes on it from up the chain.
/Kyle Aurand/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
(571) 270-3039
<image001.png>
From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Wednesday, March 18, 2020 11:16 AM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: Re: ACT Certification Marks
Thank you, Kyle. Have you been able to read the proposed amendment?
Sent from my iPhone
On Mar 18, 2020, at 8:13 AM, Aurand, Kyle <Kyle.Aurand@uspto.gov> wrote:
Hi Michelle,
Many of us (myself included) are having major IT issues attempting to work from home. From what it seems, our servers/VPN network are getting overloaded, and in my case, I am getting kicked off our network. Unfortunately, when I am kicked off the network, I have zero access to anything. No email, no phone, no access to our systems. In short, I will try my best to get the application moving forward as quick as I am able to. Also as a note, last night I was looking at the file and my manager had me defer the 2d search until we could get the ID fixed. So please note that I still need to do another search to check for any potential Section 2(d) refusals.
Hope the systems start working soon and we can get these applications moving!
/Kyle Aurand/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
(571) 270-3039
<image001.png>
From: Michelle Kahn <MKahn@sheppardmullin.com>
Sent: Tuesday, March 17, 2020 2:27 PM
To: Aurand, Kyle <Kyle.Aurand@USPTO.GOV>
Cc: Jessica Wright <JWright@sheppardmullin.com>
Subject: ACT Certification Marks
Importance: High
Hi Kyle,
Thank you so much for speaking with me today. This is the proposed amendment to the services for all 4 of the ACT Certification Mark applications:
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 and natural resource services, food preparation and serving services, arts, entertainment, media and communications services, education and training services, government and public administration services, health science services, hospitality and tourism services, human services, legal services, public safety, corrections and security services, manufacturing services, marketing and sales services, transportation, distribution and logistics services, community and social services, and installation, maintenance and repair services by individuals who possess the necessary foundational skills in core disciplines, namely reading, math and graphic literacy.
This is the proposed amendment to the certification statement for all 4 of the ACT Certification Mark applications:
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 of business management services, business administration services, financial operations services, architecture, construction and engineering services, Information technology services, agriculture and natural resource services, food preparation and serving services, arts, entertainment, media and communications services, education and training services, government and public administration services, health science services, hospitality and tourism services, human services, legal services, public safety, corrections and security services, manufacturing services, marketing and sales services, transportation, distribution and logistics services, community and social services, and installation, maintenance and repair services, an indication that the workplace services are being performed by individuals with the necessary foundational skills to meet the needs of the employer.
Please let me know if this is acceptable or if you would like to see further amendments. If acceptable, you are authorized to do an Examiner’s Amendment for all 4 applications; Seral Nos. 88693139; 88693155, 88693119, 88693022. I would love to hear back today if that is possible.
Thank you,
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