UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/063885
MARK: DEUTSCHE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Deutsche Bank AG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0989545.
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. §11.14(c).
37 C.F.R. §§11.1, 11.14; 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:
Section 2(d) Refusal
Applicant’s mark is “Deutsche” (and design), while the registered marks are “Deutsche Telekom” (U.S. Registration No. 2443607), DEUTSCHE POST WORLD NET (U.S. Registration No. 2935613), DEUTSCHE TELEKOM GROUP (U.S. Registration No. 2954037), DEUTSCHE POST WORLD NET (U.S. Registration No. 2982378), “Deutsche Post World Net” (U.S. Registration No. 3003026), “T Deutsche Telekom BusinessPartner” and design (U.S. Registration No. 306027) and “T Deutsche Telekom” (U.S. Registration No. 3378519).
With respect to U.S. Registration No. 2443607, the applicant and registrant specify identical and/or closely related International Class 036, 038 and 042 services.
As to U.S. Registration No. 2935613, the applicant’s broadly worded International Class 035 business services encompass the International Class 035 business services specified in the cited registration. Similarly, the applicant’s broadly worded International Class 036 services encompass the more specific International Class 036 services listed in the cited registration.
The instant application and cited U.S. Registration Nos. 2954037 and 3067027 specify identical and/or closely related services in International Classes 035, 036, 038 and 042.
With respect to U.S. Registration Nos. 2982378 and 3003026, the instant application and the cited registration specify identical and/or closely related International Class 038 services.
Lastly, the educational services set forth in U.S. Registration No. 3378519 cover the same subject matter as the services set forth in the instant application.
Applicant must respond to the requirement(s) set forth below.
Identification of Services
THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Applicant must clarify the identification of services by deleting the following repetitive wording:
“business research”.
See TMEP §1402.01.
The following wording in the identification of services is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification. Moreover, some of the wording is also too broad and could include services classified in other international classes:
“acquisition and providing and transmission of information to others in respect of trading and business”
“Financial affairs; monetary affairs; insurance; real estate affairs; provision of finance information and finance data online and on the Internet, included in this class”
“Telecommunications services, namely transmission of programs and information for trading in and handling foreign exchange, interest rate and monetary transactions, securities, investments and other monetary affairs; providing an access at information and data regarding financial affairs online and on the Internet”.
Applicant may amend the identification to the following, if accurate:
“Provision of business information; business management and organization consultancy; business research; business research; provision of statistical information, business forecasts, information and consultancy with regard to the aforesaid services; acquiring and providing trade and business information” [in International Class 035]
“Financial advice and consultancy services; monetary strategy consultation and research; insurance administration, brokerage and consultancy; real estate brokerage and consultation; provision of financial information and financial data information online and on the Internet” [in International Class 036]
“Telecommunications services, namely transmission of information by electronic communication networks related to trading in and handling foreign exchange, interest rate and monetary transactions, securities, investments and other monetary affairs; providing access to databases regarding financial affairs online and on the Internet” [in International Class 038]
“Computer programming” [in International Class 042].
TMEP §§1402.01 and 1402.03. [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]
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.
Classification Cannot be Changed – Informational Advisory
Disclaimer
Applicant must disclaim the geographically descriptive wording “DEUTSCHE” apart from the mark as shown because it is primarily geographically descriptive of Applicant’s services. (See attached translation information from www.wordreference.com and attached entry from The American Heritage Dictionary of the English Language, Fourth Edition, 2000.) See 15 U.S.C. §1056(a); TMEP §§1210.06(a), 1213.03(a).
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.
No claim is made to the exclusive right to use “DEUTSCHE” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Translation
Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.32(a)(9); see TMEP §809. In the present case, the wording “DEUTSCHE” requires translation. (See attached translation information from www.wordreference.com).
The following translation statement is suggested: “The English translation of DEUTSCHE in the mark is GERMAN.” TMEP §809.02.
Mark Description
The mark consists of the term “Deutsche” and a design comprised of a slash mark inside a square.
Ownership of Prior Registrations
If applicant is the owner of U.S. Registration Nos. 1179478, 1782926, 2577082, 2608877, 2916056, 2947145, 3055706, 3104100 and 3424547, 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. 1179478, 1782926, 2577082, 2608877, 2916056, 2947145, 3055706, 3104100 and 3424547.
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
(571) 272-9284
(571) 273-9107 (fax)
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.