UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/476155
APPLICANT: Wells Fargo & Company
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CORRESPONDENT ADDRESS: FELICIA J. BOYD FAEGRE & BENSON LLP 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: BASIC PACKAGE SAVINGS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 11554-
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 76/476155
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
Mark is Merely Descriptive
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).
The applicant applied to register the mark BASIC SAVINGS PACKAGE for “banking services.” The term BASIC means “of, being, or serving as a starting point or basis: a basic course in Russian; a set of basic woodworking tools.”[1] Additionally, the term PACKAGE refers to “a proposition or an offer composed of several items, each of which must be accepted.”[2] Further, the term SAVING refers to “money saved: a bank account for savings.”[3] Furthermore, the examining attorney refers to the excerpted articles from the examining attorney’s search in a computerized data base in which “basic savings” appeared in several stories. See attachments. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984). The mark, therefore, describes the features, characteristics and purpose of the applicant’s services and nothing else. Accordingly, the mark is refused registration on the Principal Register under section 2(e)(1).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
INFORMALITIES
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter. The applicant must insert a disclaimer of SAVINGS in the application. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because the wording SAVINGS is generic. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP section 1213.02(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Zachary R Bello
/Zachary R Bello/
Trademark Attorney
Law Office 111
(703) 308-9111 ext 409
ecom111@uspto.gov
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[3]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.