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:  January 27, 2022

 

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 Results

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.

 

Unnecessary Section 2(f) Claim

Applicant claims that the entire applied-for mark has acquired distinctiveness under Trademark Act Section 2(f); however, the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d).  As this Section 2(f) claim appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be published on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the entire applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

Activity Not Registrable Service

Registration is refused because the activities recited in the identification of services, when viewed in conjunction with the specimen, 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 §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(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:  “Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of identity management to determine conformity with certification standards.”  The specimen indicates that these activities are not registrable services. The specimen states the following:

 

IDENTITY MANAGEMENT CERTIFICATION OVERVIEW

Identity management certification is a fast growing area among information security certifications which is shaping the cybersecurity profession.

 

WHY IDENTITY MANAGEMENT CERTIFICATION

Identity management certification is an important part of any professional who provides services to an organization or members of the society. A professional certification provides the required credibility, knowledge and confidence to offer the best possible services and win the trust of those who rely on certified experts for guidance and solutions.

 

CERTIFICATION OVERVIEW “The Certified Identity Management Professional (CIMP)® designation is developed and administered by Identity Management Institute® (IMI). CIMP is a registered certification mark and vendor-neutral credential designed for global identity professionals…”

 

WHO SHOULD BECOME A CIMP

Certified Identity Management Professional (CIMP)® members are technical experts in gathering identity and access management requirements based on business needs, compliance requirements, emerging threats, and risk assessment results.

 

CERTIFIED IDENTITY MANAGEMENT PROFESSIONAL CERTIFICATION BENEFITS

Certified Identity Management Professional (CIMP) members are technical experts in developing and implementing scalable identity management solutions…

 

CERTIFIED IDENTITY MANAGEMENT PROFESSIONAL CERTIFICATION PROCESS

Currently, interested and qualified members may become a Certified Identity Management Professional (CIMP) without an examination…. 

 

The specimen shows that the applicant is the accrediting body that provides the testing, evaluating, and analyzing services. Thus, the applicant is providing the services for its own benefit rather than by a third party. The testing, analysis, and evaluation services is merely an ancillary activity to the granting of certification; the actual activity applicant is doing. See §§TMEP 1402.11(k).

 

The specimen shows the applicant has created a certification program and the proposed mark is used to identify the customer who has gone through the certification program.  Accreditation and certification activities are not considered “services” under the Trademark Act or Nice Classification. See TMEP §§1402.11(k).

 

A “certification mark” is a type of trademark that is used to show consumers that particular goods and services, or their providers, have met certain standards, such as regional or other origin, quality, or that the work or labor on the goods or services was performed by members of a union.  15 U.S.C. §1127; TMEP §1306.01.  The certification owner usually does not use the certification mark but rather those who actually provide the certified goods or services and have been certified by the owner use it.  15 U.S.C. §1127; TMEP §1306.01(a).  The specimens show the applicant does not use the proposed mark to identify the source of origin for its services.

 

Unclear Whether Applicant Has Service Mark or Certification Mark-Advisory. 

Applicant submitted an application to register a service mark with the USPTO; however from the specimen, it appear applicant may have a certification mark.  A certification mark indicates that goods, services, or the providers of those goods and/or services meet certain standards; whereas a trademark or service mark identifies the source of applicant’s goods or services.  See TMEP §§1202, 1301, 1306.01(a).  Because the application requirements for a certification mark differ from those of a trademark or service mark, applicant must satisfy the requirements for at least one filing basis for a certification mark.  See 37 C.F.R. §2.45(a)(4); TMEP §§1306, 1306.02, 1306.06(b). 

 

Applicant must provide at least one complete filing basis for a certification mark.  There are four possible filing bases that can be asserted in a certification mark application after it has been filed:  (1) use in commerce under Trademark Act Section 1(a), (2) intent to use the mark in commerce under Section 1(b), (3) a claim of priority based on a prior-filed foreign trademark application under Section 44(d), and (4) ownership of a foreign trademark registration under Section 44(e).  See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1054; 37 C.F.R. §2.45(a)(4)(i)-(a)(4)(iv); TMEP §1306.02(a).  The most common bases are “use in commerce” and “intent to use.”

 

For information on certification marks, the basis requirements, and instructions on how to satisfy these requirements using the online Trademark Electronic Application System (TEAS) response form, see the Certification Mark Applications webpage.

 

The identification of services for a certification mark must describe the services of the party who receives the certification, not the activities of the certifying organization.  See 37 C.F.R. §2.45(a)(2); TMEP §1306.02(c). 

 

General wording for goods and services, such as “produce,” “beef,” “fabric,” “dry cleaning services,” or “dental services,” is usually acceptable.  However, if the certification program itself is limited to specific goods and/or services, then the identification should specify those goods and/or services.  Id.  The identification should generally not include the wording “certification,” “certify,” or “certifies.”  Id. Applicant may amend this wording to adopt the following, if accurate:  Identity risk management in Class B.

 

Processing fee will be required if amending to a certification mark.  Applicant will have to submit an additional processing fee of $100 per class because certification marks, collective membership and collective marks are not eligible to be filed using the reduced fee TEAS Plus application.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.03.

 

Email/Telephone for Inquiries

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.    

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

angela.micheli@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 January 27, 2022 for

U.S. Trademark Application Serial No. 90709698

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·        Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.