In re Application of

Canadian Counselling and Examiner: T. Young
Psychotherapy Association
Law Office: 120

Serial No.: 761719,025

Commissioner for Trademarks
Post Office Box 1451
Alexandria, VA 22313-1451

This communication responds to the Office Action issued by the assigned examiner in

connection with the captioned application.

I. Refusal Under Section 2(e)(2)

The assigned examiner refuses registration of Applicant’s mark, CANADIAN

CERTIFIED COUNSELLOR, finding that the mark is primarily geographically descriptive.

Applicant maintains that its mark is at most suggestive. Nevertheless, in order not delay

prosecution of the application, Applicant advises that its mark has been in use in commerce since

at least as early as 1996; and that, even if geographically descriptive at the time of its adoption,

the mark has become distinctive and is entitled to registration on the Principal Register under

Section 2(t) of the Trademark Act, 15 U.S.C. 1052 (f), based on exclusive and continuous use of

the mark for over twenty (20) years. Applicant requests that the examiner enter the following

statement in the record:

The mark has become distinctive of the certified services through the authorized
users’ substantially exclusive and continuous use of the mark in commerce that the
U.S. Congress may lawfully regulate for at least the five years immediately before
the date of this statement.
II. Specimen of Use

Applicant notes the requirement for specimens showing use of Applicant’s mark by

certified parties. Applicant will submit the required specimens under separate cover.

III. Recitation of Services

Applicant amends the description of services as proposed by the examiner to read as

psychological counseling, namely, professional counselling, psychotherapy,
and guidance services for facilitating human change related to wellness,
relationships, personal growth, career development, mental health, and
psychological illness or distress, and professional counselling, psychotherapy,
and guidance services characterized by the application of recognized
cognitive, affective, expressive, somatic, spiritual, developmental, behavioral,
learning, and systemic principles and including a broad range of mental
health services, namely: providing human change supports for persons,
couples, families, and groups with diagnosed mental illnesses or mental
health issues, learning disabilities, marriage difficulties, eating disorders,
stress, depression, anger, grief, infertility, weight management and body
image, addictions, indigenous issues, family difficulties and career
development and management.

IV. Section 44(d) Filing Basis

The examiner asserts that Applicant’s priority claim is invalid on the ground that

Applicant failed to file the captioned application within six months of the filing date of its

corresponding application in Canada, August 14,2015. The examiner is advised that the six-

month anniversary of the filing of Applicant’s home-country application expired on February 14,

2016, a Sunday. Moreover, Monday, February 15,2016 was President’s Day, a Federal holiday.

The examiner is advised that a hard copy of the captioned application was forwarded to the U.S.

Patent and Trademark Office through United States Mail on February 16,2016 and bears a

Certificate of Mailing for that date. The captioned application must be deemed to be filed on that

date and was timely for purposes of Applicant’s priority claim. See T.M.E.P. § 305.02(e)

V. Substitute Declaration

Applicant attaches to this Response a Substitute Declaration executed on behalf of


VI. Entity and Citizenship Information

Applicant amends the application to indicate that it is a Canadian incorporated


VII. Certification Statement

Applicant amends the certification statement to read as follows:

The certification mark, as used or intended to be used by persons authorized
by the certifier, certifies or is intended to certify that the services provided
have met the certifier’s standards of competence in the field of personal,
social, and psychological counselling, as indicated by education
requirements, competent and ethical professional work experience, and
agreement to comply with standards in the provision of personal, social, and
psychological counselling.

VIII. Statement of Non-Use

Applicant amends the non-use statement to read as follows:

Applicant is not engaged in the production or marketing of the services to
which the mark is applied, except to advertise or promote recognition of the
certification program or of the services that meet the certification standards
of Applicant.

IX. Remarks

In view of the foregoing, Applicant has complied substantially with the issues raised in

the examiner’s Office Action. Applicant will submit specimens of use under separate cover,

which will place the captioned application in condition for allowance.