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:  November 02, 2020

 

 

INTRODUCTION

 

This application was approved for publication on July 31, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issues below.  See TMEP §706.01. 

 

Further, it is noted that the record indicates that an Official Gazette Publication Confirmation was sent out on September 8, 2020. However, this confirmation was sent out in error.

 

The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES:

• Sections 1, 2, 3, and 45 Refusal – Activity Not A Service
• Specimen Refusal – Required

 

SECTIONS 1, 2, 3, AND 45 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 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.

 

SPECIMEN REFUSAL – REQUIRED

 

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 “SILVER” level;

 

• Job postings stating that applicants achieving the “Silver NCRC” is preferred; and

 

• Resumes stating that the individual has obtained “Silver” 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.

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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 November 02, 2020 for

U.S. Trademark Application Serial No. 88693155

 

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 November 02, 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.”