| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76497146 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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REQUEST FOR RECONSIDERATION Applicant filed an intent-to-use application on March 13, 2003. On July 7, 2003, Applicant filed an amendment to allege use and on September 22, 2003, the amendment was approved by the Examiner. Several office action exchanges have occurred since that time. Most recently, on November 15, 2004, in response to a refusal based on descriptiveness, the Applicant amended its application to the Supplemental Register. Applicant also amended its identification of goods to follow the suggestion of the Examiner. On May 16, 2005, in an office action containing major clerical errors, it appears that the Examining Attorney refused the identification of services because it was outside the scope of the services contained in the originally filed application. The Examiner's office action, however, refers to words and phrases that have never been included in Applicant's identification of services. Furthermore, the Examiner Attorney claims that the application cannot be accepted on the Supplemental Register because it is based on an intent-to-use. As previously noted, Applicant filed an amendment to use in 2003, which has been approved. Thus, Applicant respectfully disagrees with the Examiner on both issues and asks that the Examiner's refusals be withdrawn. IDENTIFICATION OF GOODS The Examiner refused registration because the identification of goods are not within the scope of the identification of goods that was set forth in the application. Specifically, the Examiner states that the Applicant's amendment to the identification of goods is improper because it substitutes the wording "registered representatives" for "investment product providers" and the original identification states that the goods provide "customized fund fact sheets." Furthermore, the Examiner states that Applicant's original identification of goods are used for the purpose of "peer group comparisons." This is all wrong because none of these phrases appear in the Applicant's identification of goods. It appears that the Examiner has confused two of Applicant's applications. The Examiner's office action for the mark IPLAN appears to relate to Applicant's application for the mark IMANAGER, Serial No. 76/497,147. In fact, in the middle of the Examiner's office action for IPLAN, the office action for the mark IMANAGER has been inserted. Although Applicant's attorney attempted to discuss this with the Examiner over the telephone, the Examiner indicated that she would not discuss any issues related to this application. Therefore, Applicant attempts to respond to Examiner's rejection. Applicant's originally filed application contained the following identification of goods: "web-based investment planning software used by registered representatives to develop asset allocation plans." The Examiner refused the identification of goods as indefinite because it did not specify the type of software. The Examiner suggested the following identification of goods "Computer software [specify the function of the programs] that may be downloaded from a global computer network for sue by registered representatives to develop asset allocation plans." In response to the Examiner's suggestion, Applicant amended its identification to "Computer software for use in creating and generating investment portfolios that may be accessed through a global computer network for use by registered representatives to develop asset allocation portfolios." The Examiner again refused Applicant's identification of goods stating that the Applicant has not provided the precise function of the software and that the use of the word "portfolio" rather than "plan" was outside the scope of the original goods. The Applicant most recently amended the identification of goods to "Computer software that may be accessed through a global computer network for use by registered representatives to develop asset allocation based plans, namely investment portfolios by means of software tools namely graphical charts, text and completing forms." The Examiner's refusal fails to address the Applicant's most recent amendment. However, upon reviewing Applicant's originally filed identification of goods listed above, Applicant submits that its most recent identification is a proper amendment that either clarifies or properly limits the identification as described in TMEP §§ 1402.06 et seq. The Trademark Manual of Acceptable Identification of Goods indicates that computer software may be limited by function, i.e. use as a spreadsheet, word processing, etc. and, if the software is content-specific or field-specific, by that field of use. Therefore, Applicant's limitation of use to "graphical charts, text and completing forms" and "investment planning" should satisfy both requirements. Finally, the fact that the identification of goods uses the phrase "investment portfolio" rather than "investment plans" does not broaden the scope of the Application. Indeed, "investment portfolio" is not nearly as broad a phrase as "investment plan." The phrase "investment planning" refers to the concept of deciding where to invest money, capital or time in order to make a profit, i.e. stocks, bonds, mutual funds, money-market accounts, businesses, hedge-funds, etc. The term "asset allocation" refers to how each of your investments, or assets, are divided up, or allocated, between the infinite number of types of investments. Last, "investment portfolios" refers to the actual selection of your investments, which has been created through the process of "investment planning." Based on the foregoing, the use of the term "portfolio" is one part of "investment planning," and therefore within the scope of the original identification of goods. Based on the foregoing, Applicant respectfully requests that the Examiner withdraw its refusal based on the identification of goods.
SUPPLEMENTAL REGISTER
The Examiner has refused the Applicant?s amendment to the Supplemental Register because an application based on an intent-to-use is not eligible for registration on the Supplemental Register until an amendment to allege use has been filed. As noted previously, Applicant?s amendment to allege use was filed on July 7, 2003. The Examiner accepted the amendment to allege use on September 22, 2003. Based on the foregoing, Applicant again requests that the Examiner amend this application to the Supplemental Register and states as follows: The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). CONCLUSION Despite the fact that the Examiner's office action appears to address an application other than the one at issue herein, Applicant has attempted to respond to each of issues. Applicant, therefore, respectfully requests that the Examiner withdraw its refusals and pass the mark to publication. In the event that the Examiner desires to maintain its refusal based on the identification of goods, Applicant requests that the Examiner issue a further office action since that the Examiner's previous office action was non-responsive. |
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| ADDITIONAL STATEMENTS SECTION | |
| SUPPLEMENTAL REGISTER | "The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register')." |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Mark.I.Feldman/ |
| SIGNATORY NAME | Mark I. Feldman |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 11/14/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Nov 14 11:23:47 EST 2005 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20051114112347897357-7649 7146-3208a67a5b6cb7b32da2 7657ac1b147249-N/A-N/A-20 051114103123756953 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
REQUEST FOR RECONSIDERATION
Applicant filed an intent-to-use application on March 13, 2003. On July 7, 2003, Applicant filed an amendment to allege use and on September 22, 2003, the amendment was approved by the Examiner. Several office action exchanges have occurred since that time. Most recently, on November 15, 2004, in response to a refusal based on descriptiveness, the Applicant amended its application to the Supplemental Register. Applicant also amended its identification of goods to follow the suggestion of the Examiner.
On May 16, 2005, in an office action containing major clerical errors, it appears that the Examining Attorney refused the identification of services because it was outside the scope of the services contained in the originally filed application. The Examiner's office action, however, refers to words and phrases that have never been included in Applicant's identification of services. Furthermore, the Examiner Attorney claims that the application cannot be accepted on the Supplemental Register because it is based on an intent-to-use. As previously noted, Applicant filed an amendment to use in 2003, which has been approved. Thus, Applicant respectfully disagrees with the Examiner on both issues and asks that the Examiner's refusals be withdrawn.
IDENTIFICATION OF GOODS
The Examiner refused registration because the identification of goods are not within the scope of the identification of goods that was set forth in the application. Specifically, the Examiner states that the Applicant's amendment to the identification of goods is improper because it substitutes the wording "registered representatives" for "investment product providers" and the original identification states that the goods provide "customized fund fact sheets." Furthermore, the Examiner states that Applicant's original identification of goods are used for the purpose of "peer group comparisons." This is all wrong because none of these phrases appear in the Applicant's identification of goods. It appears that the Examiner has confused two of Applicant's applications. The Examiner's office action for the mark IPLAN appears to relate to Applicant's application for the mark IMANAGER, Serial No. 76/497,147. In fact, in the middle of the Examiner's office action for IPLAN, the office action for the mark IMANAGER has been inserted.
Although Applicant's attorney attempted to discuss this with the Examiner over the telephone, the Examiner indicated that she would not discuss any issues related to this application. Therefore, Applicant attempts to respond to Examiner's rejection.
Applicant's originally filed application contained the following identification of goods: "web-based investment planning software used by registered representatives to develop asset allocation plans." The Examiner refused the identification of goods as indefinite because it did not specify the type of software. The Examiner suggested the following identification of goods "Computer software [specify the function of the programs] that may be downloaded from a global computer network for sue by registered representatives to develop asset allocation plans." In response to the Examiner's suggestion, Applicant amended its identification to "Computer software for use in creating and generating investment portfolios that may be accessed through a global computer network for use by registered representatives to develop asset allocation portfolios." The Examiner again refused Applicant's identification of goods stating that the Applicant has not provided the precise function of the software and that the use of the word "portfolio" rather than "plan" was outside the scope of the original goods. The Applicant most recently amended the identification of goods to "Computer software that may be accessed through a global computer network for use by registered representatives to develop asset allocation based plans, namely investment portfolios by means of software tools namely graphical charts, text and completing forms."
The Examiner's refusal fails to address the Applicant's most recent amendment. However, upon reviewing Applicant's originally filed identification of goods listed above, Applicant submits that its most recent identification is a proper amendment that either clarifies or properly limits the identification as described in TMEP §§ 1402.06 et seq. The Trademark Manual of Acceptable Identification of Goods indicates that computer software may be limited by function, i.e. use as a spreadsheet, word processing, etc. and, if the software is content-specific or field-specific, by that field of use. Therefore, Applicant's limitation of use to "graphical charts, text and completing forms" and "investment planning" should satisfy both requirements.
Finally, the fact that the identification of goods uses the phrase "investment portfolio" rather than "investment plans" does not broaden the scope of the Application. Indeed, "investment portfolio" is not nearly as broad a phrase as "investment plan." The phrase "investment planning" refers to the concept of deciding where to invest money, capital or time in order to make a profit, i.e. stocks, bonds, mutual funds, money-market accounts, businesses, hedge-funds, etc. The term "asset allocation" refers to how each of your investments, or assets, are divided up, or allocated, between the infinite number of types of investments. Last, "investment portfolios" refers to the actual selection of your investments, which has been created through the process of "investment planning." Based on the foregoing, the use of the term "portfolio" is one part of "investment planning," and therefore within the scope of the original identification of goods.
Based on the foregoing, Applicant respectfully requests that the Examiner withdraw its refusal based on the identification of goods.
SUPPLEMENTAL REGISTER
The Examiner has refused the Applicant?s amendment to the Supplemental Register because an application based on an intent-to-use is not eligible for registration on the Supplemental Register until an amendment to allege use has been filed. As noted previously, Applicant?s amendment to allege use was filed on July 7, 2003. The Examiner accepted the amendment to allege use on September 22, 2003. Based on the foregoing, Applicant again requests that the Examiner amend this application to the Supplemental Register and states as follows:
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').
CONCLUSION
Despite the fact that the Examiner's office action appears to address an application other than the one at issue herein, Applicant has attempted to respond to each of issues. Applicant, therefore, respectfully requests that the Examiner withdraw its refusals and pass the mark to publication. In the event that the Examiner desires to maintain its refusal based on the identification of goods, Applicant requests that the Examiner issue a further office action since that the Examiner's previous office action was non-responsive.