UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/455499
APPLICANT: J.M. Corporation
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CORRESPONDENT ADDRESS: J.M. CORPORATION 333 THORNALL STREET EDISON, NJ 08837-2220
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom108@uspto.gov
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MARK: AT ASSISTANT TREASURER REDEFINING TREASU ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/455499
The assigned examining attorney has reviewed the referenced application and determined the following.
DRAWING
The drawing appears to be lined for color. The applicant must include a statement that the mark is lined for the color(s) yellow. 37 C.F.R. §§2.37 and 2.52(a)(2)(v); TMEP §807.09(b).
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services. TMEP §904. The application does not contain a specimen. The applicant must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
The applicant must disclaim the descriptive wording “Treasury Management” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because the services include managing treasury accounts.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use Treasury Management apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
A SEARCH OF THE OFFICE RECORDS REVEALED A CONFUSINGLY SIMILAR PRIOR PENDING MARK
The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01. Please note that the examining attorney has found a potentially conflicting pending application.
The examining attorney encloses information regarding pending Application Serial No. 78-034597. The filing date of the referenced application precedes the applicant's filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section 1208.01.
RClark
Examining Attorney
Law Office 108
703-308-9108 ext. 162
Fax: 703-746-8108
RClark
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.