To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
`
`Reboot Veterans (meinsiedel@bakerlaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 88348173 - REBOOT VETERANS - 107412.98907
`
`5/31/2019 1:48:39 PM
`
`ECOM109@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88348173*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88348173
`
`           
`
`MARK: REBOOT
`VETERANS
`
`CORRESPONDENT
`ADDRESS:
`  
`       MARK S.
`EINSIEDEL
`  
`       BAKER &
`HOSTETLER LLP
`         200 CIVIC CENTER
`DRIVE
`           COLUMBUS, OH
`43215
`    
`   
`APPLICANT: Reboot
`Veterans
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  107412.98907
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`meinsiedel@bakerlaw.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 5/31/2019
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issue(s) 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 has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`However, before the mark can be published for opposition, the applicant must address the following.
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`Refusal under Sections 1 and 45 – Specimen Unacceptable
`
`Registration is refused because the applied-for mark, as used on the specimen of record, is used only as a trade name to identify applicant’s
`business; it does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others. 
`Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Walker Process Equip. Inc., 233 F.2d 329, 332, 110 USPQ 41,
`43-44 (C.C.P.A. 1956); TMEP §§904.07(b), 1301.02(a).  Although a designation may function as both a trade name and a service mark, the
`Trademark Act does not provide for registration of matter that functions solely as a trade name.  In re Univar Corp., 20 USPQ2d 1865, 1866-67
`(TTAB 1991); TMEP §1202.01.
`
`The determination as to whether a trade name also functions as a service mark is based on the manner in which the applied-for mark is used on
`the specimen or any other evidence of use, as well as the probable impact of such use on purchasers.  See In re Univar Corp., 20 USPQ2d at
`1867; In re The Signal Cos., 228 USPQ 956, 957 (TTAB 1986); TMEP §1202.01.  In this case, the specimen shows the applied-for mark used
`following the copyright symbol and no place else on the specimen.  As such it identifies the business claiming the copyright but not the source of
`the services described therein.
`
`A trademark or service mark is used to identify and distinguish an owner’s services from those of others and to indicate the source of the
`owner’s services.   A trade name, however, identifies and distinguishes an owner’s business or vocation.   15 U.S.C. §1127; TMEP §1202.01.
`
`Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b) for
`each applicable international class.
`
`Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a service
`mark for the services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “
`The substitute specimen was in use in commerce at least as early as the filing date of the application.”   37 C.F.R. §2.59(a); TMEP §904.05;
`see 37 C.F.R. §2.193(e)(1). 
`If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the
`
`amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.  
`
`Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and
`webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens
`comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).
`
`To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1)
`answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for
`which a substitute specimen is being submitted:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,”
`select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing
`basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Specimen
`File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following
`statement: “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally
`submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of
`the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Note:  When submitting a
`verified substitute specimen, the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the
`
`“Response Signature” section.   
`
`Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to
`use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant
`amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an
`acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is
`submitted with an allegation of use, the same refusal will likely issue.
`
`To amend 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), 2.193(e)(1).  
`
`To amend to Section 1(b) online using the TEAS response form, applicant should (1) answer “Yes” to form wizard question #2, and then, after
`proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended:  (2) under “Classification
`and Listing of Goods/Services/Collective Membership Organization,” select the following statement: “Check here to modify the current
`classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration
`certificate.  If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section
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`1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes;
`and (4) check the box for “Filing Basis Section 1(b).”   Note:  When amending to Section 1(b), the TEAS online response form requires two
`signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.
`
`Recitation of Services in International Class 35
`
`The identification of services for International Class 35 must be clarified because it is too broad and could include services in other international
`classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass training services which are c
`
`classified in International Class 41.  
`
`The applicant may amend the recitation of services in International Class 35 as follows, if accurate:  Charitable services, namely, providing on-
`line employment information for veterans in the field of job resources and listings and listing for vocational training centers.
`
`Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original
`application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See
`TMEP §1402.07(e).
`
`The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the
`requirements below for each international class:
`
`(1)      
`
`(2)      
`
`(3)      
`
`(4)      
`
`List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest
`numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
`
`Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  
`Specifically, the application identifies services based on use in commerce that are classified in at least two classes; however, applicant
`submitted a fee sufficient for only one class.   Applicant must either (a) submit the filing fees for the classes not covered by the
`submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
`
`Submit verified dates of first use of the mark anywhere and in commerce for each international class.   See more information
`about verified dates of use.
`
`Submit a specimen for each international class.   The current specimen is not acceptable for any international class.   See more
`information about specimens.
`
`Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and
`
`billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.   
`
`(5)      
`
`Submit a verified statement that “ The specimen was in use in commerce on or in connection with the goods and/or services
`listed in the application at least as early as the filing date of the application.”   See more information about verification.
`
`See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
`
`See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark
`Electronic Application System (TEAS) form.
`
`For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S.
`Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.
`
`Disclaimer
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`Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be
`registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s
`appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
`
`In this case, applicant must disclaim the wording “VETERANS” because it is not inherently distinctive.  These unregistrable term(s) at best are
`merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C.
`§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP
`
`§§1213, 1213.03(a).  
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`Specifically, based on the applicant’s own recitation of services, the applicant’s services are for VETERANS.
`
`Applicant may respond to this issue by submitting a disclaimer in the following format:  
`No claim is made to the exclusive right to use “VETERANS” apart from the mark as shown.   
`
`For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
`
`Disclaimer webpage.  
`
`Reply Guidelines
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.   
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining
`attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with
`additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does
`not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. 
`
`See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.    
`
`/Julie Watson/
`Trademark Examining Attorney
`Law Office 109
`571-272-9236
`julie.watson@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Reboot Veterans (meinsiedel@bakerlaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 88348173 - REBOOT VETERANS - 107412.98907
`
`5/31/2019 1:48:41 PM
`
`ECOM109@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 5/31/2019 FOR U.S. APPLICATION SERIAL NO. 88348173
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 5/31/2019 (or sooner if specified in the Office action).  A response
`transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
`response period.   For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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