Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/825396

 

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 mark, which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found potentially conflicting pending applications.

 

Information is enclosed concerning pending Application Serial Nos. 78727144, 78727151, and 78727155.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the marks in the above noted applications.  The filing date of the referenced applications precedes applicant’s filing date.  If the earlier‑filed applications register, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

 

Action on this application will be suspended pending the disposition of Application Serial Nos. 78727144, 78727151, and 78727155, upon receipt of the applicant's response resolving the following informality.

 

INFORMALITY 

RECITATION OF SERVICES-UNACCEPTABLE:

Applicant must amend the identification of services to delete the term "sale(s)" and to indicate with greater specificity the nature of the service. The term "sales" in the identification of services is unacceptable because selling is not considered a service that is rendered for the benefit of someone other than applicant.  In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); TMEP §§1402.01 and 1402.03.  The recitation of services must be specific. The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  The recitation must be all‑inclusive. The applicant may amend the identification to substitute the following wording, if accurate:  “Commercial lending services; brokerage and securitization of commercial loans,” in International Class 036.   37 C.F.R. Section 2.71(a); TMEP sections 1402.01 and 1402.03 et seq. [1]

 

 

 

 

/Darryl M. Spruill/

Trademark Attorney

Law Office 112

(571) 272-9418 (office)

(571) 273-9418 (fax)

darryl.spruill@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.