UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/482249
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 ecom108@uspto.gov
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MARK: WELLS FARGO BALANCED DEFINED PORTFOLIO
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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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PRIORITY ACTION
OFFICE SEARCH: 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 704.02.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Serial Number 76/482249
The following issues were discussed in communication with Felicia Boyd on May 9, 2003.
PRIOR REGISTRATIONS
If the applicant is the owner of Registration Nos. 0779187, 2030590, 2433473 and others, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
DISCLAIMER REQUIRED
The applicant must disclaim the descriptive wording "BALANCED DEFINED PORTFOLIO" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213. The wording merely describes a feature of the applicant's financial services. See attached excerpt pages from three websites.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use "BALANCED DEFINED PORTFOLIO" apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
Trademark Act Section 6(a), 15 U.S.C. §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. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney 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 §1213.01(b).
RESPONSE
If the applicant has particular questions regarding any of the issues set forth in this Office action, the applicant may telephone the assigned examining attorney.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 ext. 198
fax: (703) 746-8108
douglas.lee4@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.
To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/
For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm