To: | Dickson, Felicia Georgiana (f.gill@arcstofreedom.com) |
Subject: | U.S. Trademark Application Serial No. 90290634 - CARC - N/A |
Sent: | April 08, 2021 09:42:11 AM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90290634
Mark: CARC
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Correspondence Address:
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Applicant: Dickson, Felicia Georgiana
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: April 08, 2021
Search of USPTO Database of Marks
Sections 1, 2, 3, and 45 Refusal – Mark Does Not Function as a Service Mark
The applied-for mark, as shown on the specimen, does not function as a service mark because the mark serves solely as post-nominal letters. Specifically, the mark appears as “Felicia Gill, CARC.” Therefore, the applied-for mark would be perceived by the relevant public as identifying only applicant’s professional license, certification, or affiliation because the mark appears after applicant’s name, where post-nominal letters appear. Moreover, the specimen does not reference the applied-for services in that it is not clear that applicant provides life coaching.
Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows proper service mark use for the services in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §1301.04(a).
(2) Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c). This option will later necessitate additional fee(s) and filing requirements, including a specimen.
To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Identification of Services
Class 41: “Life coaching services in the field of addiction; Life coaching services in the field of {specify subject area, e.g., substance, alcohol, domestic, etc.} abuse”.
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Advisory: Applicant May Wish to Seek Trademark Counsel
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and 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.
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.
Anicka Purath
/Anicka S. Purath/
Examining Attorney
Law Office 101
(571) 270-0622
anicka.purath@uspto.gov
RESPONSE GUIDANCE