To: | MOBIUS RISK GROUP LLC (Lfgould@duanemorris.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86027138 - MOBIUS RISK GROUP LLC - G0338-00002 |
Sent: | 11/27/2013 4:28:50 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86027138
MARK: MOBIUS RISK GROUP LLC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: MOBIUS RISK GROUP LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/27/2013
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
NO CONFLICTING MARKS FOUND
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, applicant must respond to the following requirement(s) before registration can be granted.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
Applicant’s services are identified as “Consulting Services for producers, consumers and market participants engaged in energy and commodity transactions, namely, financial and physical commodity risk management services; valuation services; financial interest rate and foreign exchange transaction services; contract administration, in International Class 35; and; Dodd-Frank Reporting and Reporting Compliance Services” in International Class 35.
Applicant may adopt the following identification of services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:
Class 35: Contract administration in the nature of assisting with the formation, negotiation, and management of contracts with public sector entities
Class 36: Consulting Services for producers, consumers and market participants engaged in energy and commodity transactions, namely, financial risk management consultation in the fields of financial and physical commodity markets; financial valuation services; financial interest rate and foreign exchange transaction services in the nature of providing for the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems;
Class 45: Regulatory compliance consulting regarding the Dodd-Frank Wall Street Reform and Consumer Protection Act
ID Manual Online
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:
(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.
(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class 36 only. Applicant must submit additional specimens if different international classes are added to the application.
DISCLAIMER REQUIRED
The applicant must insert a disclaimer of “RISK GROUP LLC” in the application because this wording merely describes a feature of applicant’s services. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
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.
Wording is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
In this case, applicant’s mark is MOBIUS RISK GROUP LLC and design for “Consulting Services for producers, consumers and market participants engaged in energy and commodity transactions, namely, financial and physical commodity risk management services; valuation services; financial interest rate and foreign exchange transaction services; contract administration, in International Class 35; and; Dodd-Frank Reporting and Reporting Compliance Services.” The term “RISK” is defined as “[t]he possibility of suffering harm or loss; danger” or “[t]he variability of returns from an investment.” http://www.thefreedictionary.com/risk. When considered in relation to the identified services, the term “RISK” merely describes a feature (i.e., subject matter) of applicant’s services. This is supported by the express language in the identified of services, namely, “financial and physical commodity risk management services.”
The term “GROUP” is defined as “a number of persons or things considered as a collective unit.” http://www.collinsdictionary.com/dictionary/english/group. The term “LLC” refers to a “limited liability company,” which is a type of corporation whose owners have limited liability. http://www.macmillandictionary.com/dictionary/american/LLC. When considered in relation to the identified services, the wording “GROUP LLC” merely describes applicant’s entity type. Business entity designations such as “Corporation,” “Inc.,” “Company,” and “Ltd.” must be disclaimed because they merely indicate applicant’s entity type and generally do not function to indicate the source of goods or services. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988).
Thus, the wording “RISK GROUP” merely describes a feature of applicant’s services (i.e., a group that provides consultation in the field of risk management) and the acronym “LLC” refers to the formal name of applicant’s legal entity. The examining attorney notes that the wording “RISK GROUP LLC” was disclaimed in applicant’s prior registration for the same mark, U.S. Registration No. 3284137.
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “RISK GROUP LLC” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
DESCRIPTION OF THE MARK
The mark is currently described as follows: “The mark consists of miscellaneous designs with overall oval shape, including amoeba-like shapes and irregular ovals with the word MOBIUS in large black letters followed by RISK GROUP LLC under the word MOBIUS.”
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is suggested:
The mark consists of the stylized stacked wording “MOBIUS RISK GROUP LLC” appearing below the stylized depiction of a series of wavy lines forming a design that resembles an infinity symbol.
/Amy L. Kertgate/
Examining Attorney
Law Office 113
Tel: (571) 272-1943
Email: amy.kertgate@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.