UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/541998
APPLICANT: Deutsche Bank AG
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CORRESPONDENT ADDRESS: DARCI J. BAILEY CLIFFORD CHANCE US LLP 200 PARK AVENUE NEW YORK, NEW YORK 10166-0153
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: DEUTSCHE BANK LIQUID COMMODITY INDEX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 4532/32
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 76/541998
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. §1052(d). TMEP §704.02.
The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant’s goods and services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).
The primary significance of the term “DEUTSCHE” is geographic, and applicant’s goods and services come from the geographical place named in the mark. Therefore, a public association of the goods and services with the place is presumed. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). TMEP §1210.04(b).
The wording LIQUID COMMODITY INDEX is descriptive of a feature of the services, namely providing financial services and information related to commodity indices, and more specifically, those deemed more liquid in nature. See attached definitions from an online investment dictionary. Also see the attached articles taken from a research database. Also see the press release taken from the applicant’s website discussing the index, at http://www.ghp.deutsche-bank.de.
Potential Future Amendment to Supplemental Register
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.
Certain marks which are not eligible for registration on the Principal Register, but which are capable of distinguishing an applicant's goods or services, may be registered on the Supplemental Register. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. However, there are three main benefits for amending to the Supplemental Register: (1) use of the registration symbol, (2) access to federal courts and (3) the registered trademark is protected by Section 2(d) of the Trademark Act.
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. An application based solely on Section 44 may be registered to the Supplemental Register without alleging lawful use in commerce. TMEP §815.02. See the issues regarding filing basis discussed below.
The applicant must respond to the following informalities.
The identification of goods is unacceptable as indefinite. “Printed matter” and “publications” is indefinite. The applicant must describe the printed matter by the common commercial name for the goods, e.g., books, magazines, etc. TMEP §1402.01. Written contracts are usually not goods in trade unless they are blank contract forms sold for others to use by filling in blank spaces. In this case, they should be identified as such. Stationery used in conducting one’s own investment services is incidental to the services and are not goods in trade. If these are not goods in trade, they should be deleted from the identification of goods. The applicant may adopt the following identification, if accurate:
Printed matter and publications, namely, books, newsletters, pamphlets, magazines, reports, manuals, all relating to investment services and commodity indexes, in IC 016.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.
The recitation of services is unacceptable as indefinite. The wording "investment services" is indefinite. The applicant must describe the investment services. The provision or management of facilities is a service classified in IC 035, and pertains to the management of the physical buildings that comprise the investment services. The applicant may adopt the following recitation, if accurate:
Investment services, namely, the provision of investment advice; financial consulting, financial evaluation, financial analysis and fiscal evaluation; the collection, provision and dissemination of financial information all relating to commodity indexes; information and advisory services all relating to the aforesaid services, in IC 036.
Providing facilities for investment services; providing facilities for investment services relating to commodity indexes, in IC 035.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.
If the applicant adopts the suggested amendments to the identification of goods and services, the applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes. 37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
The application identifies services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).
Requirements for a Multiple Class Application
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods and services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
Filing Basis Requirements Not Met – Date of Foreign Filing Required
Where an application is based on a foreign application for the same mark and the same goods or services, applicant must satisfy the following requirements:
(1) File a “claim of priority” within six months of the filing date of the foreign application.
(2) Specify the filing date and foreign country of the first regularly filed foreign application; or state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;
(3) Specify the serial number of the foreign application upon which the priority claim is based; and
(4) Submit the following verified statement: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.” The statement must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.
Trademark Act Section 44(d), 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).
The applicant has not provided the filing date of the European Community Trademark Application. The applicant must provide this date in order to meet the requirements for the filing basis.
Applicant has claimed priority under Section 44(d), 15 U.S.C. §1126(d), as the basis for filing; and this Office presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the United States. TMEP §§806.01(c) and 1003.03. Under such circumstances, the application may not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 et seq.
If the applicant cannot comply with the requirement for filing within six months of the foreign filing for the Section 44(d) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b). See the attached declaration.
The applicant will submit a translation of the non-English wording in the mark for the record. 37 C.F.R. §2.61(b); TMEP §809. The translation shall read as follows:
The English translation of DEUTSCHE is [indicate the English translation].
The applicant must disclaim the descriptive wording “BANK” 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 of the service provider, e.g., that the services are provided by a bank.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “BANK” apart from the mark as shown.
If the applicant is the owner of Registration Nos. 1782926 and 2477254, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda A. Powell/
Trademark Examining Attorney
Law Office 106
(703) 308-9106 ext. 259
(703) 746-8106 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 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.
108B8C
Print Request: Selected Document(s): 2,3
Time of Request: December 31, 2003 04:37 PM EST
Number of Lines: 38
Job Number: 1822:0:26727106
Client ID/Project Name:
Research Information:
US Newspapers and Wires
liquid w/5 (commodity index)
Send to: POWELL, LINDA
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
2 of 3 DOCUMENTS
Copyright 1999 A.M. Best Company, Inc.
BestWire
January 5, 1999
LENGTH: 190 words
HEADLINE: AIG, DOW JONES TO MARKET COMMODITY INDEX
BODY:
...Inc., a member of American International Group Inc., and Dow Jones Indexes have agreed to jointly market AIG International's commodity index. The index is based on highly liquid commodities futures contracts and will be called the Dow-Jones-AIG Commodity Index.
3 of 3 DOCUMENTS
Copyright 1992 Chicago Tribune Company
Chicago Tribune
August 12, 1992, Wednesday, NORTH SPORTS FINAL EDITION
SECTION: BUSINESS; Pg. 3; ZONE: C; Business briefs
LENGTH: 78 words
HEADLINE: Commission OKs new CBOT contract
BODY:
...Commission approved a plan by the Chicago Board of Trade to trade futures contracts based on the exchange's International Commodity Index, which represents the most liquid dollar-denominated futures contracts for physical commodities. The index was created by the CBOT this year to serve as a benchmark of ...