To: | Canadian Imperial Bank of Commerce (IPDocket@mayerbrown.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87891514 - CIBC - N/A |
Sent: | 8/20/2018 1:00:53 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87891514
MARK: CIBC
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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: Canadian Imperial Bank of Commerce
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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: 8/20/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
AMENDED IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED
Class 16:
The identification of goods in Class 16 is acceptable as written.
Class 35:
Applicant has classified “external human resources programs, namely, the provision of human resources programs, external and employee educational programs, namely, employee recruitment, development and educational services, namely, conducting courses of instruction in the area of banking, financial planning, credit counseling, mortgage information, house purchasing” in International Class 35; however, the proper classification for programs in the field of employee recruitment and leadership development and conducting courses of instruction in various fields is International Class 41. Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying these services in the proper international class, (2) deleting “external human resources programs, namely, the provision of human resources programs, external and employee educational programs, namely, employee . . . development and educational services, namely, conducting courses of instruction in the area of banking, financial planning, credit counseling, mortgage information, house purchasing” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Class 36:
Applicant must clarify the wording “credit card services”, “debit card services”, and “insurance services” in the identification of services in International Class 36 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “credit card registration services” are in Class 35, “credit card payment processing services” are in Class 36, “debit card transaction processing services are in Class 36”, “insurance claims auditing” are in Class 35, and “insurance agency services” are in Class 36. Applicant must amend the identification and classify the services appropriately.
Applicant may adopt the following identification and classification of goods and services, if accurate:
Class 16: Publications, namely, magazine, newsletters, brochures in the field of financial services, banking
Class 35: Credit card registration services; Insurance services in the nature of insurance claims auditing services
Class 36: Banking services; on-line interactive banking services; credit card payment processing services; debit card transaction processing services; financial services, namely, {indicate common commercial name, e.g., financial risk assessment services, money lending, etc.}; investment services, namely, financial planning and investment advisory services; wealth management services, namely, financial investment counseling; financial consulting services, namely, financial management consulting; investment banking services; securities brokerage services; trust company services; insurance services in the nature of insurance agency services; charitable fundraising and charitable fundraising by means of collection of donations for charitable purposes; financial sponsorship of sports, cultural, health-related and educational events
Class 41: Educational services in the nature of external human resources educational programs, namely, the provision of educational human resources programs, and external and employee educational programs in the nature of providing educational programs in the field of employee recruitment and leadership development, and educational services in the nature of conducting courses of instruction in the area of banking, financial planning, credit counseling, mortgage information, house purchasing
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
AMENDED DESCRIPTION OF MARK REQUIRED
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is suggested:
The mark consists of the stylized letters “CIBC” appearing to the left of a stylized, three-dimensional diamond design.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, 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. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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 $125 per 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.
/Katerina D. Satanovsky/
Examining Attorney, Law Office 120
United States Patent and Trademark Office
(571) 272-4542
katerina.satanovsky@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.