To: | Scrum Alliance, Inc. (sborrelliipdocket@jw.com) |
Subject: | U.S. Trademark Application Serial No. 88826286 - ACE - 148077.00226 |
Sent: | June 04, 2020 01:32:52 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88826286
Mark: ACE
|
|
Correspondence Address:
|
|
Applicant: Scrum Alliance, Inc.
|
|
Reference/Docket No. 148077.00226
Correspondence Email Address: |
|
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
SEARCH OF USPTO DATABASE OF MARKS
SECTIONS 1 AND 14 REFUSAL – CERTIFICATION MARK CANNOT BE IDENTICAL TO TRADEMARK OR SERVICE MARK
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
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