Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88298503

DATE:                                10/25/2019

NAME:                               kmccoy

NOTE:         

 X   Issued Examiner’s Amendment 
     and entered changes in TRADEUPS

   

Hi Kelly—I just left you a voicemail, but I am following up via email in case that’s easier on your end.  This concerns US App. No. 88/298,503 for the AMOUNT & Design mark.  The Office Action raised some issues with some of the wording in Class 36, which I’m hoping to discuss with you.  The specific objected-to wording is set forth below along with my comments.  The deadline to response is November 3, 2019.

 

·         Auto loan services in Class 36.  You suggested the client amend to “auto loan brokerage services.” 

o   Foley comments:  Our client owns a number of prior filings that have been accepted by the USPTO with the wording “auto loan services” in Class 36.  See, e.g., US Reg. No. 5,063,990 and 5,033,285 and US App. No. 88/108,593 (for a companion AMOUNT application).   “Auto loan services” has also been accepted by the USPTO in a number of third-party registrations.  See, e.g., 2,158,654; 5,665,248; 4,323,247; and 2,911,308.  The ID Manual also indicates that the USPTO accepts other wording that is similar to “auto loan services,” such as “credit and loan services,” “student loan services,” and “financing and loan services.”  For these reasons, I’m hoping you would reconsider the refusal with respect to “auto loan services” and accept the language as written.

 

·         Financial services, namely, processing consumer loan applications for others in Class 36.

o   Foley comments:  This language was also rejected in our client’s application for the AMOUNT word mark.  See US App. No. 88/108,593.  The Examining Attorney for that application accepted the following amendment: “Financial Financing and loan services, namely, processing consumer loan applications for others.”  The Examining Attorney found this language acceptable due, in part, to the fact that the ID Manual indicates the wording “Financing and loan services” by itself is acceptable.  I’m hoping you would also be willing to accept this same amendment here for consistency sake. 

 

If you agree with the above, I’m happy to have you enter the response via Examiner’s Amendment.  I look forward to your comments, and let me know if you would like to further discuss. 

 

Thanks!

 

AJ Schumacher
Associate

Foley & Lardner LLP
321 North Clark Street

Suite 2800
Chicago, IL 60654-