PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 85486906 MAYBANK (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85486906) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Malaysia registration number 2011015541/0 registered 08/26/2011, with a renewal date of __________ and an expiration date of 08/26/2021, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_6722016510-172601715_._Registration__MAYBANK_Class_16.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1
Original PDF file:
FR_6722016510-172601715_._Registration__MAYBANK_Class_36.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1
Comment(s)/Remark(s):

RESPONSE TO SUSPENSION INQUIRY

 

Commissioner:

 

            The Examining Attorney, by Suspension Inquiry dated January 28, 2013 the period for response set to expire on July 29, 2013 (July 28, 2013 falling on a Sunday), the Applicant responds as follows:

AMENDMENTS

Foreign Registrations

 

Please make the enclosed certification of Malaysian Trademark Registration Nos. 2011015541 (Class 16) and 2011015540 (Class 36) of record in this application. 

Upon acceptance of the Malaysian trademark registrations, please delete the "Intent to Use" basis for the application, and allow the application to be based solely upon Section 44(e).

Recitation of Services

Please delete the existing recitation of services in its entirety in International Class 36 only (Identification of Goods in Class 16 remains unchanged), and replace it with the following:

“Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques,” in International Class 36.

 

Color Claim / Description Of The Mark

Please make the following color claim/description of the mark of record in this application:

“The color(s) orange and black is/are claimed as a feature of the mark.”

 

“The mark consists of the stylized wording "MAYBANK" in the color black to the right of the black profile of a tiger head in a black circle all on an orange background.”

 

 

REMARKS

The Examining Attorney, by Suspension Inquiry dated January 28, 2013 the period for response set to expire on July 29, 2013 (July 28, 2013 falling on a Sunday), has requested that Applicant advise as to the status of Applicant’s corresponding applications pending in its country of origin and also continued and maintained the informality pertaining to the recitation of services and color claim / description of the mark, which Applicant addresses below. 

In response, Applicant submits herewith photocopies of Malaysian Trademark Registration Nos. 2011015541  (registered for  International Class 16 goods) and 2011015540 (registered for  International Class 36 services) of record in this application. By submitting the photocopies of the Malaysian registrations, Applicant has fulfilled the requirements of maintaining its basis under Section 44(e).

Applicant notes that the Malaysian Registrations depict two marks i.e., in color and in black and white in one registration. Applicant advises the Examining Attorney that Intellectual Property Corporation of Malaysia allows applicants to register variations of a mark in one application.

The present application is based on both "Intent to Use" under Section 1(b) of the Trademark Act and on a foreign registration under Section 44(e).  Upon acceptance of the submitted Malaysian trademark registrations, Applicant requests that the "Intent to Use" basis be deleted.

Further, the Examining Attorney has continued and maintained the requirement for International Class 36 services. Specifically, the Examining Attorney has taken the position that the wording in Applicant’s identification of services, namely, “financial evaluation of all financial services and products” is not sufficiently definite and has required deletion thereof.  Accordingly, by amendment hereinabove, Applicant has deleted “financial evaluation of all financial services and products” from the identification and has complied with the requirements of the Examining Attorney.

Finally, the Examining Attorney has required Applicant to submit a color claim/description of the mark because the original color claim/description was unacceptable as it did not claim all the colors that appear in the mark and describe their locations. Accordingly, Applicant by amendment hereinabove is submitting herewith a color claim/description of the mark adopting the Examining Attorney’s suggestion in its entirety.

Accordingly, it is submitted that the present application is fully in condition for publication.  Further and favorable action deleting the Section 1(b) basis and passing the present mark to publication for opposition purposes under Section 44(e) is earnestly solicited.

 

The Commissioner is hereby expressly authorized to charge any fee deficiency, or credit overpayment, in connection with this matter to Deposit Account No. 14-0112.  Should the Examining Attorney have any questions, please contact the undersigned at (858) 792-8211.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about ¬financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Malaysia application number 2011015541 filed 08/26/2011]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about ¬financial services; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holdersClass 016 for Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Malaysia application number 2011015541 filed 08/26/2011]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Malaysia registration number 2011015541 registered 08/26/2011 with a renewal date of __________ and an expiration date of 08/26/2021 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-6722016510-172601715_._Registration__MAYBANK_Class_16.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes, financial evaluation of all financial services and products; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Malaysia application number 2011015540 filed 08/26/2011]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes, financial evaluation of all financial services and products; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers chequesClass 036 for Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Malaysia application number 2011015540 filed 08/26/2011]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Malaysia registration number 2011015540 registered 08/26/2011 with a renewal date of __________ and an expiration date of 08/26/2021 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-6722016510-172601715_._Registration__MAYBANK_Class_36.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.


ADDITIONAL STATEMENTS
Color Claim
The color(s) orange and black is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "MAYBANK" in the color black to the right of the black profile of a tiger head in a black circle all on an orange background.

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /H. David Starr and Gulnaz T. Donahue/    Date: 07/26/2013
Signatory's Name: H. David Starr and Gulnaz T. Donahue
Signatory's Position: Attorneys for Applicant, Members of the District of Columbia and Tennessee
Signatory's Phone Number: 858-792-8211

Response Suspension Inquiry Signature
Signature: /H. David Starr and Gulnaz T. Donahue/     Date: 07/26/2013
Signatory's Name: H. David Starr and Gulnaz T. Donahue
Signatory's Position: Attorneys for Applicant, Members of the District of Columbia and Tennessee
Signatory's Phone Number: 858-792-8211

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.

        
Serial Number: 85486906
Internet Transmission Date: Fri Jul 26 17:37:30 EDT 2013
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XX-2013072617373002
7316-85486906-5006c84141e53830af73b7d931
08e824ab5f5a897165317a9d9629737ef1be23-N
/A-N/A-20130726172601715365