To: | ICMA-RC (trademarksri@leclairryan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87192590 - ICMA RC BUILDING PUBLIC SECTOR - 29859.0001 |
Sent: | 1/11/2017 5:13:11 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87192590
MARK: ICMA RC BUILDING PUBLIC SECTOR
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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: ICMA-RC
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/11/2017
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
SEARCH RESULTS
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, applicant must comply with the following procedural requirements.
IDENTIFICATION OF SERVICES
Applicant has identified the following in International Class 36: Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans, pension plans, retirement funds and deferred compensation plans; providing brokerage and related services on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; and providing financial planning information to state and local governments and their employees via the Internet.
Applicant may substitute the following wording, if accurate:
International Class 36:
Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; and providing financial planning information to state and local governments and their employees via the Internet
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. See TMEP §1402.04.
NEW DRAWING REQUIRED
A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).
To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing. TMEP §807.05(a); see 37 C.F.R. §2.53(a). An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top. 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a). The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide. 37 C.F.R. §2.54(b); TMEP §807.06(a). Further, the drawing must be made with ink or by a process that will provide a high definition when scanned. 37 C.F.R. §2.54(e); TMEP §807.06(a). A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used. 37 C.F.R. §2.54(e); TMEP §807.06(a).
The USPTO will not accept amendments or changes to the applied-for mark shown in a new drawing if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
COLOR DRAWING CLARIFICATION
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the letters ICMA RC BUILDING PUBLIC SECTOR RETIREMENT SECURITY written underneath three angular lines depicting mountains, with two curved lines running through the mountains and the A of ICMA and the R of RC.
(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors dark blue, light blue and gray are claimed as a feature of the mark.”
Mark description: “The mark consists of the letters ICMA in dark blue, RC in light blue and BUILDING PUBLIC SECTOR RETIREMENT SECURITY in dark blue, all written underneath three angular dark blue lines depicting mountains, with two curved light blue lines running through the mountains and the A of ICMA and the R of RC.”
See TMEP §807.07(b).
If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.
/Katherine Weigle/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 101
Telephone: 571-270-1506
Email: katherine.weigle@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.