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:  June 04, 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 USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Sections 1 and 45 Refusal – Certification Mark Cannot Be Identical to Trademark or Servicemark
• Certification Standards Advisory

 

SECTIONS 1 AND 14 REFUSAL – CERTIFICATION MARK CANNOT BE IDENTICAL TO TRADEMARK OR SERVICE MARK

 

Registration is refused because applicant is using or intends to use the same mark both as a certification mark and as a trademark or service mark for the goods and/or services to which the certification mark applies.  Trademark Act Sections 4 and 14, 15 U.S.C. §§1054, 1064(5)(B); see 37 C.F.R. §2.45(f); TMEP §1306.04(f).  The instant application identifies the applied-for mark as a certification mark; however, applicant has used or is intending to use the same mark as a trademark or service mark for the services to which the certification mark applies, as evidenced by U.S. Application Serial No. 88826283.  See attachment.

 

Trademarks or service marks and certification marks are essentially mutually exclusive.  That is, a party may not own a registration for a certification mark and for a trademark or service mark for the goods and/or services to which the certification mark applies.  See 15 U.S.C. §§1054, 1064(5)(B); 37 C.F.R. §2.45(f).  Moreover, a certification mark registration may be cancelled if the registrant “engages in the production or marketing of any goods or services to which the certification mark is applied.”  15 U.S.C. §1064(5)(B).

 

Trademarks or service marks and certification marks are different and distinct types of marks that serve different purposes.  See TMEP §1306.04(f).  A trademark or service mark is used by the mark’s owner to indicate the source of his or her goods and/or services.  Id.  However, a certification mark is not used by the owner but rather is used by authorized persons other than the owner to indicate that a product and/or service has been certified with respect to geographic origin, quality of workmanship, or some other characteristic.  See id.

 

CERTIFICATION STANDARDS ADVISORY

 

Upon submission of an allegation of use, applicant must submit a copy of the standards used to determine who is authorized to use the certification mark.  See 37 C.F.R. §§2.76(b)(5), 2.88(b)(5); TMEP §1306.03(b).  These standards must cover the full scope of the goods and/or services identified in the application, not just a subset of the goods and/or services.  TMEP §1306.03(b).  For example, if the goods are “olive oil,” but the standards are only for “extra virgin olive oil,” applicant must submit standards for all types of olive oil or amend the identification to “extra virgin olive oil.”  Id.

 

Further, applicant is not required to create the standards; they may be established by another party, such as a government agency or private research organization.  Id.

 

RESPONSE AND ASSISTANCE

 

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 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.    

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 04, 2020 for

U.S. Trademark Application Serial No. 88826286

 

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. 

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 04, 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.”