UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/578115 APPLICANT: Canadian Imperial Bank of Commerce | |
| CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 |
| MARK: CIBC WALL OF INSPIRATION | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: N/A CORRESPONDENT EMAIL ADDRESS: | 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. |
Serial Number 76/578115
The assigned examining attorney has reviewed the referenced application and determined the following:
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. §1052(d). TMEP §704.02.
However, applicant must respond to the following issues.
IDENTIFICATION OF SERVICES
The wording in the identification of services needs clarification because it fails to identify the nature of the charitable services with sufficient particularity. Under the 8th edition of the Nice Agreement, the nature of the services provided now controls classification. TMEP §1402.01.
Therefore, applicant may amend the wording to specifically identify the nature of the services as follows, if accurate:
- organizing charitable events, namely [identify specific activity/event, e.g., volunteer programs] in the areas of health, culture, education and sports, and
- promotion of charitable events [identify nature of promotion activity, e.g., using audio visual media] are classified in Class 35;
- charitable fundraising;
- philanthropic services concerning monetary donations, and
- financial sponsorship of charitable events, namely [identify specific event, e.g., art classes for children] are classified in Class 36.
However, 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. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
OWNERSHIP OF REGISTRATION(S)
Applicant’s claim of ownership of U.S. Registration No. 2517612 will not be printed on any registration that may issue from this application because the marks are different. Only prior registrations for the same or similar marks for the same or related goods/services are considered related registrations for purposes of an ownership claim. 37 C.F.R. §2.36; TMEP §812.
BASES 1(b) & 44(d)
If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator. TMEP §§1004.01 and 1004.01(b).
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.
To reach the undersigned attorney by telephone after October 27, 2004, please call (571) 272-9429.
If applicant has any questions or needs assistance in responding, applicant is encouraged to telephone or email the assigned examining attorney.
Kelly A Choe
/KAC/
Trademark Attorney
USPTO Law Office 113
Tel. 703. 308.9113 x167
Response. www.uspto.gov/teas
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/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.