UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/522283
APPLICANT: Jackson National Life Insurance Company
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CORRESPONDENT ADDRESS: JOHN C. BLATTNER BUTZEL LONG 350 S. MAIN, SUITE 300 ANN ARBOR, MI 48104
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: NATIONAL PLANNING HOLDINGS
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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 76/522283
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
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. §1052(d). TMEP §704.02.
Disclaimers
The applicant must disclaim the descriptive wording “NATIONAL” and “HOLDINGS” 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 applicant’s services are holding company services which are national in scope.
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 NATIONAL and HOLDING apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Significance of Mark
The applicant must indicate whether “PLANNING” has any significance in the relevant trade. 37 C.F.R. §2.61(b). The applicant should be advised that if the term does have descriptive significance, the examining attorney may refuse registration of the entire mark under Trademark Act Section 2(e)(1).
If the applicant has any questions, please contact the undersigned.
/Janice L. McMorrow/
Examining Attorney
Law Office 115
ecom115@uspto.gov
703/308-9115 x 170
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.