UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/507074
APPLICANT: Ibbotson Associates, Inc.
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*76507074* |
CORRESPONDENT ADDRESS: MARK I. FELDMAN PIPER RUDNICK PO BOX 64807 CHICAGO IL 60664-0807
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: IBBOTSON SILENT PARTNER
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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 76/507074
The assigned examining attorney has reviewed the referenced application and determined the following.
The applicant must insert a disclaimer of “SILENT PARTNER” in the application. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i). The wording is descriptive because it describes the nature of the services. Attached please find articles showing that the term SILENT PARTNER is used in the financial world to describe one who aids in the financial workings of the company, but has no official voice. This software, like a SILENT PARTNER, aids the user in making financial decisions, but has no voice.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “SILENT PARTNER” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Inga Ervin/
Inga Ervin
Trademark Attorney
Law Office 111
703 308-9111x 226
703 746-8111 (fax)
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 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.