Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

INTRODUCTION TO ADDITIONAL NON-FINAL OFFICE ACTION

This additional, non-final Office Action is written in response to applicant’s “Response to Suspension Inquiry or Letter of Suspension” (hereinafter “Response”) dated 11/25/2015.

In her last Office Action, the examining attorney suspended action on the application pending the outcome of Application Serial No(s). 85771339.

In its Response, applicant requested the application be removed from suspension for further examination. The consent agreement provided in the Response raised a new issue and provides the basis for this additional, non-final Office Action.

UNACCEPTABLE CONSENT AGREEMENT – New Issue

The submitted consent agreement is unacceptable for the reasons provided, below.

The provided consent agreement indicates that the owner of the cited application, U.S. Application Serial No. 85771339 is “ICAP Service North America LLC,” “a limited liability company organized under the laws of the State of Delaware, having an address of Harborside Financial Plaza, 1100 Plaza Five, Jersey City, NJ 07311.” Later, this same agreement states that “ICAP Services has applied to register the mark ICAP SECURITIES & DERIVATIVES EXCHANGE as set forth in U.S. Trademark Application Serial No. 85771339.” See¸ page 1 “Consent Agreement.”

However, the owner of U.S. Trademark Application Serial No. 85771339 is “ICAP Plc” located at “2 Broadgate LONDON UNITED KINGDOM EC2M7UR.” Additionally, the applicant is a public limited company organized under the laws of the United Kingdom. See, TSDR attachment. Additionally, the cited application has not been assigned to ICAP Service North America LLC. See Id. Therefore, it is not apparent from the record that ICAP Service North America LLC has the authority to grant consent to Institutional Capital LLC for the use of ICAP Plc’s applied for mark. Thus, the submitted consent agreement is unacceptable.

CITATION OF PRIOR PENDING APPLICATION – Maintained and Continued

The filing date of pending U.S. Application Serial No. 85771339 precedes applicant’s filing date. See previously attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

RESPONSE/CORRESPONDENCE INFORMATION & GUIDELINES

Please note that informal communications with the examining attorney “may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal.” TMEP §709.05. For consideration of arguments regarding any substantive refusal to be considered, they must be filed in a formal response. Id. The trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action. To this end, applicant may telephone or e-mail the assigned trademark examining attorney. Please note that the examining attorney cannot provide advice on trademark law. 37 C.F.R. §2.11; TMEP §709.06

An e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response; all relevant e-mail communications will be placed in the official application record. See 37 C.F.R. §§2.62 (c), 2.191; TMEP §§304.01-.02, 709.04-.05.

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov. Additional instructions for responding to this Office action are located below the signature block.

/N. Gretchen Ulrich/

Trademark Examining Attorney

Law Office 113

U.S. Patent & Trademark Office

phone: (571) 272-1951

gretchen.ulrich@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

Offc Action Outgoing

ICAP

NEW YORK LIFE INSURANCE COMPANY

Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS LETTER

Offc Action Outgoing [image/jpeg]