UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

INTERNATIONAL REGISTRATION NO. 0914300.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

INFORMALITIES

 

A.        CLARIFICATION OF CITIZENSHIP AND ENTITY TYPE

 

The application includes applicant’s “Legal Nature” and “Legal Nature:  Place Incorporated.”  However, applicant must clarify its entity type (“Legal Nature”) and citizenship (“Place Incorporated”).  37 C.F.R. §2.32(a)(3); TMEP §§803.03, 803.04.  Applicant specified “England & Wales”, however, this indicates two countries of incorporation.  Applicant may wish to substitute this citizenship and entity type as a “Public Limited Company” organized under the laws of the “United Kingdom”.

 

Acceptable entity types include an individual, a partnership, a corporation, or a joint venture.  See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation or association, applicant must set forth the country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.  If applicant’s entity type is a partnership or joint venture, applicant must specify the country under whose laws the partnership or joint venture is organized.  37 C.F.R. §2.32(a)(3)(ii)-(iii); TMEP §§803.03(b), 803.04.

 

B.        DISCLAIMER

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

Applicant must disclaim the descriptive wording “WEALTH” apart from the mark as shown because it merely describes a feature or purpose of the services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

The wording “WEALTH” is defined as “the value of assets owned by a person or a community”.  See attached evidence.  The wording “WEALTH” is merely descriptive because applicant’s services are presumably feature and/or are used in connection with the value of assets owned by a person or a community.

 

Suggested Form

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “WEALTH” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

C.        CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS

 

If applicant is the owner of U.S. Registration Nos. 1531207, 1530036, 3195676 and others, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1531207, 1530036, 3195676 and others.

 

D.        IDENTIFICATION OF SERVICES

 

The wording “insurance” in the identification needs clarification because it is too indefinite and is not clear as to the particular types of services (e.g., insurance carrier services, insurance subrogation). 

 

The wording “financial services” in the identification needs clarification because it is too indefinite and is not clear as to the particular types of services (e.g., credit and financial consultation, financial forecasting, financial planning). 

 

The wording “monetary affairs” in the identification needs clarification because it is too indefinite and is not clear as to the particular types of services (e.g., acquisition and transfer of monetary claims, money order services). 

   

Applicant may change this wording, if accurate, to:

  

“Insurance services, namely, {specify services in International Class 036 only, e.g., insurance carrier services, insurance subrogation}; financial services, namely, {specify services in International Class 036 only, e.g., credit and financial consultation, financial forecasting, financial planning}; monetary affairs, namely, {specify services in International Class 036 only, e.g., acquisition and transfer of monetary claims, money order services; financial management; financial administration, namely, financial administration of retirement plans, administering the issuance, underwriting and distribution of securities; financial valuation services, namely, financial valuation of personal property and real estate; management of wealth, namely, financial management, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; financing services; procurement of financing, namely, facilitating and arranging for the financing of loans and personal property; loan advice, namely, financial loan consultation; loan procurement, namely, arranging and provision of loans; mortgage services, namely, mortgage lending, mortgage procurement for others, mortgage brokerage, and mortgage planning; banking; investment management; trustee services; financial advisory services; deposit taking, namely, safe deposit box services, electronic remote check deposit services; savings services, namely, savings banks, and administration of savings accounts; investment services, namely, asset acquisition, consultation, development and management services; mortgage banking; real estate agencies; financial administration services, namely, financial administration of retirement plans, administering the issuance, underwriting and distribution of securities; provision of finance, namely, facilitating and arranging for the financing of loans and personal property; financing services for securing of funds; pension fund administration; financing services for the securing of funds for others and for the financing and arranging of loans; valuation of financial investments; investment asset management; financial valuation of chattels; nominee services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities; financial services, namely, investment funds transfer services and electronic funds transfer; brokerage agencies for insurance and credit; issuing of traveller cheques; real estate appraisal; real estate brokerage, real estate leasing, real estate management and real estate valuations; real estate procurement and acquisition; rent collection; renting and leasing of real estate; credit card services; discount securities brokerage services; cheque card services; financial guarantees; loyalty card services, namely, providing cash and other rebates for credit card use as part of a customer loyalty program; loyalty schemes, namely, providing cash and other rebates for credit card use as part of a customer loyalty program; providing information, advisory and consultancy services relating to the aforementioned services” in International Class 036

 

TMEP §1402.01.

 

Manual of Acceptable Identifications

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Scope

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).

 

 

 

/Jay C. Besch/

Trademark Examining Attorney

Law Office 108

United States Patent and Trademak Office

(571)272-8606 phone

jay.besch@uspto.g

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.