UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/661624 APPLICANT: Teachers Insurance and Annuity Associati ETC. | |
| CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 |
| MARK: TIAA-CREF RETIREMENT INCOME SOLUTIONS | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 05170249 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. |
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/661624
THIS IS A FINAL ACTION
This letter responds to the applicant’s communication filed on April 27, 2007. The applicant (1) claimed prior registrations, (2) submitted the required disclaimer, (3) amended the recitation of services. The claim of prior registrations and the disclaimer are both acceptable. The amended recitation of services is not acceptable. The requirement for a definite recitation of services is maintained and made FINAL.
THIS REFUSAL APPLIES ONLY TO THE WORDING “FINANCIAL SERVICES RELATED TO RETIREMENT.
The applicant applied to register the mark for “financial services related to retirement.” In the first Office Action, the applicant was advised that the recitation of services set forth in the application as filed is unacceptable. The applicant was advised that the applicant must specify each and every financial service relating to retirement.
In connection with this requirement, the examiner suggested that the applicant could adopt any or all of the following amended recitation of services, and the corresponding classifications of the same:
Retirement financial planning services; investment advice for retirement planning; financial information provided by electronic means for retirement planning, in International Class 36.
In response to this requirement, the applicant has amended the identification as follows:
Financial services related to retirement; financial information provided by electronic means for retirement planning, in International Class 36.
The wording “financial services related to retirement” remains unacceptable as indefinite because the applicant has not amended to specify the financial services related to retirement. The applicant has simply placed a semi-colon after the phrase and added financial information provided by electronic means for retirement planning. This is not an acceptable method of specifying the services.
As stated in TMEP Section 1402.01:
The Trademark Act requires a written application "specifying" the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(1)(A) and 1051(b)(1)(A). To "specify" means to name in an explicit manner. Additionally, Trademark Rule 2.33(a)(1)(v), 37 C.F.R. §2.33(a)(1)(v), requires that the application specify the "particular" goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark. The identification of goods or services should set forth common names, using terminology which is generally understood. For those products or services which may not have common names, language which is as clear and succinct as possible should be used. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
(emphasis added.)[1] The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules. When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. However, it is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d).
The applicant is again advised that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.uspto.gov. The applicant may find this resource to be quite useful in framing an amended and acceptable recitation of services. The applicant may adopt the following recitation of services, if accurate:
Financial information provided by electronic means for retirement planning; Retirement financial planning services; investment advice for retirement planning, in International Class 36.
In addition, the applicant is again advised 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 or services that are not within the scope of goods set forth in the present identification. In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted.
In any event, the requirement for an affirmative statement of an acceptable recitation of services, and the correct classification of the same, is Continued and is made FINAL.
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/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/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.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
These requirements also are Continued and made FINAL.
If applicant does not respond within six months of the mailing date of this final action, then the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application: financial services related to retirement. The application will proceed forward for “financial information provided by electronic means for retirement planning,” in International Class 36. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
PLEASE NOTE: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
/Tanya L. Amos/
Trademark Examining Attorney
Law Office 113
571-272-9423 Telephone
571-273-9423 Fax
1-800-786-9199 Trademark Assistance
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.uspto.gov/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.uspto.gov/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
[1] For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).