| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
79063885 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
| MARK SECTION (no change) |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Arguments_against_2_d__refusal.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0002.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0003.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0004.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885-_ROA_of_8-10-09_-_Exhibit_A.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0005.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_B.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0006.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0007.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_C.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0008.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_D-1.pdf |
CONVERTED PDF FILE(S)
(5 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0009.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0010.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0011.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0012.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0013.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_D-2.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0014.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0015.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0016.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0017.JPG |
| ORIGINAL PDF FILE |
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_E.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0018.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0019.JPG |
| |
\\TICRS\EXPORT7\IMAGEOUT7\790\638\79063885\xml1\ROA0020.JPG |
| DESCRIPTION OF EVIDENCE FILE |
-Arguments against Section 2(d) refusal - Exhibit A: Screenshot of applicant's website - Exhibit B: Financial statements from applicant's 2008
annual report - Exhibit C: Screenshot of website for Berliner Philharmoniker - Exhibit D-1: Article from news database - Exhibit D-2: Article from news database - Exhibit E: Article from news
database |
| GOODS AND/OR SERVICES SECTION (035)(current) |
| INTERNATIONAL CLASS |
035 |
| DESCRIPTION |
| 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; acquisition and providing and transmission of information to others in respect of
trading and business |
| GOODS AND/OR SERVICES SECTION (035)(proposed) |
| INTERNATIONAL CLASS |
035 |
| TRACKED TEXT DESCRIPTION |
Provision of business information; business management and organization
consultancy; business consultancy; business research; business research; compilation of statistics, compilation of business forecasts , business research information and business research consultancy, provision of business statistical information and
consultancy regarding the compilation of business statistics; provision of statistical information, business forecasts, information and consultancy with regard
to the aforesaid services; acquisition and providing of commercial information to others; acquisition and providing and
transmission of information to others in respect of trading and business |
| FINAL DESCRIPTION |
| Provision of business information; business consultancy; business research; compilation of statistics, compilation of business
forecasts , business research information and business research consultancy, provision of business statistical information and consultancy regarding the compilation of business statistics;
acquisition and providing of commercial information to others |
| GOODS AND/OR SERVICES SECTION (036)(current) |
| INTERNATIONAL CLASS |
036 |
| DESCRIPTION |
| Financial affairs; monetary affairs; insurance; real estate affairs; provision of finance information and finance data online and on
the Internet, included in this class |
| GOODS AND/OR SERVICES SECTION (036)(proposed) |
| INTERNATIONAL CLASS |
036 |
| TRACKED TEXT DESCRIPTION |
Financial affairs; Financial services, namely investment banking
services; monetary affairs; monetary services, namely investment fund transaction services; insurance; insurance brokerage in the field of life, health, accident and fire insurance; real estate
affairs; real property management services, namely, real property financing, real estate procurement for others, rental of commercial offices, leasing and
management; provision of finance information and finance data online and on the Internet, included in this class; providing financial, real estate and insurance information and data in online services and on the Internet |
| FINAL DESCRIPTION |
| Financial services, namely investment banking services; monetary services, namely investment fund transaction services; insurance
brokerage in the field of life, health, accident and fire insurance; real property management services, namely, real property financing, real estate procurement for others, rental of commercial
offices, leasing and management; providing financial, real estate and insurance information and data in online services and on the Internet |
| GOODS AND/OR SERVICES SECTION (038)(current) |
| INTERNATIONAL CLASS |
038 |
| DESCRIPTION |
| 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 |
| GOODS AND/OR SERVICES SECTION (038)(proposed) |
| INTERNATIONAL CLASS |
038 |
| TRACKED TEXT DESCRIPTION |
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; Telecommunications in the field of financial
affairs, 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; transmission of information
and data online and on the Internet |
| FINAL DESCRIPTION |
| Telecommunications in the field of financial affairs, transmission of programs and information for trading in and handling foreign
exchange, interest rate and monetary transactions, securities, investments and other monetary affairs; transmission of information and data online and on the Internet |
| GOODS AND/OR SERVICES SECTION (042)(no change) |
| ADDITIONAL STATEMENTS SECTION |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the term "Deutsche" and a design comprised of a slash mark inside a square. |
| PRIOR REGISTRATION(S) |
Applicant claims ownership of U.S. Registration Number(s) 1179478, 1782926, 2577082 and others. |
| SECTION 2(f) |
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related
goods or services of U.S. Registration No(s) 1179478, 1782926, 2577082, 2608877, 2916056, 2947145, 3055706, 3104100 and 3424547. |
| TRANSLATION |
The English translation of DEUTSCHE in the mark is German. |
| CORRESPONDENCE SECTION |
| ORIGINAL ADDRESS |
Mayer Brown LLP
Bockenheimer Landstraße 98-100
60323 Frankfurt am Main
FED REP GERMANY
|
| NEW CORRESPONDENCE SECTION |
| NAME |
Sanjiv D. Sarwate |
| FIRM NAME |
Pattishall McAuliffe et. al. |
| INTERNAL ADDRESS |
Suite 5000 |
| STREET |
311 South Wacker Drive |
| CITY |
Chicago |
| STATE |
Illinois |
| ZIP/POSTAL CODE |
60656 |
| COUNTRY |
United States |
| PHONE |
312-554-8000 |
| FAX |
312-554-8015 |
| EMAIL |
ssarwate@pattishall.com |
| AUTHORIZED EMAIL COMMUNICATION |
Yes |
| SIGNATURE SECTION |
| DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
| RESPONSE SIGNATURE |
/sanjiv sarwate/ |
| SIGNATORY'S NAME |
Sanjiv Sarwate |
| SIGNATORY'S POSITION |
Attorney of record, Illinois bar member |
| DATE SIGNED |
08/10/2009 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Aug 10 11:29:38 EDT 2009 |
| TEAS STAMP |
USPTO/ROA-XX.X.XX.XXX-200
90810112938200263-7906388
5-4309e4cd6ab8b1627794413
c81135ed48fe-N/A-N/A-2009
0810111554658923 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
79063885 has been amended as follows:
EVIDENCE
Evidence in the nature of -Arguments against Section 2(d) refusal - Exhibit A: Screenshot of applicant's website - Exhibit B: Financial statements from applicant's 2008 annual report - Exhibit C:
Screenshot of website for Berliner Philharmoniker - Exhibit D-1: Article from news database - Exhibit D-2: Article from news database - Exhibit E: Article from news database has been attached.
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Arguments_against_2_d__refusal.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_12226161-111554658_._79063885-_ROA_of_8-10-09_-_Exhibit_A.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_B.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_C.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_D-1.pdf
Converted PDF file(s) (5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_D-2.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_12226161-111554658_._79063885_-_ROA_of_8-10-09_-_Exhibit_E.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for 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; acquisition and providing and transmission of information to others in respect of trading and business
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Provision of business information;
business management and organization consultancy;
business consultancy;
business research;
business research;
compilation of
statistics, compilation of business forecasts , business research information and business research consultancy, provision of business statistical information and consultancy regarding the
compilation of business statistics;
provision of statistical information, business forecasts, information and consultancy with regard to the aforesaid
services;
acquisition and providing of commercial information to others;
acquisition and providing and transmission of
information to others in respect of trading and businessClass 035 for Provision of business information; business consultancy; business research; compilation of statistics, compilation of
business forecasts , business research information and business research consultancy, provision of business statistical information and consultancy regarding the compilation of business statistics;
acquisition and providing of commercial information to others
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial affairs; monetary affairs; insurance; real estate affairs; provision of finance information and finance data online and on the Internet, included in this
class
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Financial affairs;
Financial services, namely investment banking services;
monetary affairs;
monetary services, namely investment fund transaction services;
insurance;
insurance brokerage in the field of life, health, accident and fire insurance;
real estate affairs;
real property management services, namely, real property financing, real estate procurement for others, rental of commercial offices, leasing and management;
provision of finance information and finance data online and on the Internet, included in this class;
providing financial, real estate and
insurance information and data in online services and on the InternetClass 036 for Financial services, namely investment banking services; monetary services, namely investment fund transaction
services; insurance brokerage in the field of life, health, accident and fire insurance; real property management services, namely, real property financing, real estate procurement for others, rental
of commercial offices, leasing and management; providing financial, real estate and insurance information and data in online services and on the Internet
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for 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
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: 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;
Telecommunications in the field of financial affairs, 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;
transmission of information and data online and on
the InternetClass 038 for Telecommunications in the field of financial affairs, transmission of programs and information for trading in and handling foreign exchange, interest rate and monetary
transactions, securities, investments and other monetary affairs; transmission of information and data online and on the Internet
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Mayer Brown LLP
Bockenheimer Landstraße 98-100
60323 Frankfurt am Main
FED REP GERMANY
Proposed:
Sanjiv D. Sarwate of Pattishall McAuliffe et. al., having an address of
Suite 5000 311 South Wacker Drive Chicago, Illinois 60656
United States
ssarwate@pattishall.com
312-554-8000
312-554-8015
ADDITIONAL STATEMENTS
Description of mark
The mark consists of the term "Deutsche" and a design comprised of a slash mark inside a square.
Claim of Prior Registration(s)
Applicant claims ownership of U.S. Registration Number(s) 1179478, 1782926, 2577082 and others.
Section 2(f), based on Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s) 1179478,
1782926, 2577082, 2608877, 2916056, 2947145, 3055706, 3104100 and 3424547.
Translation
The English translation of DEUTSCHE in the mark is German.
SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon
later review, require a signed declaration.
Response Signature
Signature: /sanjiv sarwate/ Date: 08/10/2009
Signatory's Name: Sanjiv Sarwate
Signatory's Position: Attorney of record, Illinois bar member
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
Mailing Address: Sanjiv D. Sarwate
Pattishall McAuliffe et. al.
Suite 5000
311 South Wacker Drive
Chicago, Illinois 60656
Serial Number: 79063885
Internet Transmission Date: Mon Aug 10 11:29:38 EDT 2009
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-200908101129382002
63-79063885-4309e4cd6ab8b1627794413c8113
5ed48fe-N/A-N/A-20090810111554658923
