NOTE TO THE FILE
SERIAL NUMBER: 88334736
DATE: 06/06/2019
NAME: arosen
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Richard Peirce [mailto:RPeirce@eckertseamans.com]
Sent: Thursday, June 06, 2019 12:48 PM
To: Rosen, Amanda <Amanda.Rosen@USPTO.GOV>
Cc: Lori B. Colflesh <lcolflesh@eckertseamans.com>; Franziska Forbriger-Kramer <fforbriger-kramer@eckertseamans.com>; Maryjo Greco <MGreco@eckertseamans.com>
Subject: RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Dear Ms. Rosen:
Please amend the “mortgage services in the nature of conventional, construction, first time homebuyer, and bridge loans …” language to “mortgage services, namely, mortgage lending regarding conventional loans, construction loans, first time homebuyer loans, and bridge loans …” All of the remaining language in class 36 from our June 3 amendment should remain the same.
-Rich Peirce
From: Rosen, Amanda [mailto:Amanda.Rosen@USPTO.GOV]
Sent: Thursday, June 06, 2019 10:11 AM
To: Richard Peirce <RPeirce@eckertseamans.com>
Subject: [External] RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Hello Mr. Peirce,
All but “mortgage services in the nature of conventional, construction, first time homebuyer, and bridge loans, home equity loans” is definite. Here, applicant must still clarify the type of mortgage service they are providing in relation to these loans. Examples of definite “mortgage” services include “mortgage lending”, “mortgage banking” and “mortgage refinancing”. Please send me an amended identification that clarifies the type of mortgage service applicant provides in relation to these loans. Example below:
Class 36: Banking services and other financial services in the nature of financial trust administration, financial trust and estate planning services, estate trust planning services, individual retirement account services, financial planning for retirement, providing personal loans, mortgage services, namely, mortgage lending regarding conventional loans, construction loans, first time homebuyer loans, and bridge loans, home equity loans, issuing letters of credit, financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services, investment management, savings account services, namely, custody account services, financial management in the nature of corporate money management services, wealth and financial asset management, real estate management, financial planning, employee directed benefit administration and investment services, namely, employee welfare benefit plans concerning insurance and finance, payroll processing services, payroll administration and management services, financial administration of retirement plans, namely, 401(k) plans, banking services featuring the provision of certificates of deposit, individual retirement account services involving self-directed IRAs and, lease purchase loans for automobiles
Thank You,
Amanda Rosen
From: Richard Peirce [mailto:RPeirce@eckertseamans.com]
Sent: Monday, June 03, 2019 1:08 PM
To: Rosen, Amanda <Amanda.Rosen@USPTO.GOV>
Cc: Lori B. Colflesh <lcolflesh@eckertseamans.com>; Franziska Forbriger-Kramer <fforbriger-kramer@eckertseamans.com>
Subject: RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Dear Ms. Rosen-
This substantively responds to your May 20, 2019 email and May 25, 2019 Office action.
Please amend the identification of services to:
Class 36: Banking services and other financial services in the nature of financial trust administration, financial trust and estate planning services, estate trust planning services, individual retirement account services, financial planning for retirement, providing personal loans, mortgage services in the nature of conventional, construction, first time homebuyer, and bridge loans, home equity loans, issuing letters of credit, financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services, investment management, savings account services, namely, custody account services, financial management in the nature of corporate money management services, wealth and financial asset management, real estate management, financial planning, employee directed benefit administration and investment services, namely, employee welfare benefit plans concerning insurance and finance, payroll processing services, payroll administration and management services, financial administration of retirement plans, namely, 401(k) plans, banking services featuring the provision of certificates of deposit, individual retirement account services involving self-directed IRAs and, lease purchase loans for automobiles
Please revise the disclaimer to: No claim is made to the exclusive right to use "A DIVISION OF" and "BANK" apart from the mark as shown.
-Richard Peirce
From: Rosen, Amanda [mailto:Amanda.Rosen@USPTO.GOV]
Sent: Thursday, May 23, 2019 4:09 PM
To: Richard Peirce <RPeirce@eckertseamans.com>
Subject: [External] RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Hello Mr. Peirce,
Unfortunately, I am not able to do so. I have a limited amount of time to issue an Office action. I will issue a Priority action, though, reflecting that we’ve touched base about the matter.
Further, feel free to e-mail me, even after the issuance of the Priority action, and if the issues can be resolved by e-mail, I can still send out an Examiner’s amendment and publish the mark. This way, the issues may still be resolved informally, but you will have a longer window of time to respond or correspond w/ me via email.
Kind Regards,
Amanda Rosen
From: Richard Peirce [mailto:RPeirce@eckertseamans.com]
Sent: Thursday, May 23, 2019 2:24 PM
To: Rosen, Amanda <Amanda.Rosen@USPTO.GOV>; IP Docket <IPDocket@eckertseamans.com>; Lori B. Colflesh <lcolflesh@eckertseamans.com>
Subject: RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Dear Ms. Rosen-
I was traveling for work earlier in the week. If possible, could you extend the 5/24 deadline until next week so we can consult with our client?
Thanks,
Rich Peirce
From: Rosen, Amanda [mailto:Amanda.Rosen@USPTO.GOV]
Sent: Monday, May 20, 2019 2:45 PM
To: IP Docket <IPDocket@eckertseamans.com>; Richard Peirce <RPeirce@eckertseamans.com>; Lori B. Colflesh <lcolflesh@eckertseamans.com>
Subject: [External] RE: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Hello Mr. Peirce,
The email below contains a typo: If we are able to resolve this issue by May 24, 2019, I will be able to enter the changes via Examiner’s Amendment in lieu of issuing a refusal via Office action.
Thank You,
Amanda Rosen
From: Rosen, Amanda
Sent: Monday, May 20, 2019 2:32 PM
To: ipdocket@eckertseamans.com; rpeirce@eckertseamans.com; lcolflesh@eckertseamans.com
Subject: Response Requested: TM Application for “FCBANK A DIVISION OF CNB BANK” (88334736)
Hello Mr. Peirce,
I am currently reviewing your application for “FCBANK A DIVISION OF CNB BANK” (88334736). The application looks good, however, clarification to the identification is required. Further, the “OR” in the disclaimer should be amended to read “AND”. Applicant should note that particular identification entries may have been allowable in the past; it is possible that since that time, standards of definiteness have changed. Standards and decisions regarding form of a disclaimer have also evolved. Particular issues are set forth below:
ID Issues:
· Applicant must clarify the nature of the “trust” applicant is involved in the administration of, e.g. “financial” trust.
· “trust and estate planning” is indefinite as the type of trust involved is not clear. If this is an “estate trust planning” service, this may be clarified. If this is a financial trust planning services, this may be clarified.
· “retirement accounts and planning” is indefinite. Applicant must clarify the action they take in relation to the “retirement accounts”. No service is currently specified. If applicant is engaged in “individual retirement account services”, this may be clarified. If applicant is involved in the financial administration of retirement plans, this maybe clarified. Applicant must clarify the nature and subject matter of their planning services, e.g. financial planning for retirement.
· “personal loans” is indefinite. Applicant must clarify the action they take in relation to the personal loans, e.g. providing personal loans.
· “mortgages” is indefinite. Applicant must specify the action they are taking in relation to mortgages, e.g. mortgage lending, mortgage brokerage, mortgage banking, mortgage refinancing, mortgaging of securities for others.
· “letters of credit” is indefinite. Applicant must specify the action they are taking in relation to letters of credit, e.g. issuing them.
· “lines of credit” is indefinite. Applicant must specify the action they are taking in relation to the lines of credit, e.g. providing home equity lines of credit, financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services, or providing personal loans and lines of credit
· “private client solutions” is indefinite. Applicant must clarify the type of financial service involved in rendering these solutions, e.g. investment advice
· “custody accounts” is indefinite. Applicant must specify the action they are taking in relation to these accounts, e.g. financial administration of custody accounts. If this is a type of savings account services, this may be also be clarified.
· Applicant must clarify that “corporate money management services” is a type of financial management, if accurate.
· “asset management” is indefinite. Applicant must clarify the nature of the assets, e.g. financial assets.
· “employee directed benefit administration and investment services” is indefinite. Applicant must specify the type of plan they are administering. If these are “employee welfare benefit plans concerning insurance and finance”, this may be clarified.
· “payroll services” is indefinite. Applicant must clarify the nature of the payroll service, e.g. payroll processing, payroll administration and management.
· “401(k) administration” is indefinite. Applicant must clarify the nature of these plans and the nature of the administration, e.g. financial administration of retirement plans.
· “CDs” is indefinite. Applicant must not use abbreviations in this case. Applicant must use the common commercial name of the services performed in relation to the CDs, e.g. certificates of deposit, e.g. Banking services featuring the provision of certificates of deposit.
· “self-directed IRAs” is indefinite. Applicant must clarify the nature of the account, e.g. a retirement account, as well as the service provided in relation to the account, e.g. individual retirement account services.
I can suggest the following identification, if accurate:
Class 36: Banking services and other financial services in the nature of financial trust administration, financial trust and estate planning services, estate trust planning services, individual retirement account services, financial planning for retirement, providing personal loans, mortgage services in the nature of {specify types of services here, e.g. mortgage lending, mortgage brokerage, mortgage banking, mortgage refinancing}, home equity loans, issuing letters of credit, financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services, investment management, private client solutions, namely, {specify what private client solutions entails, e.g. investment advice}, savings account services, namely, custody account services, financial management in the nature of corporate money management services, wealth and financial asset management, real estate management, financial planning, employee directed benefit administration and investment services, namely, employee welfare benefit plans concerning insurance and finance, payroll processing services, payroll administration and management services, financial administration of retirement plans, namely, 401(k) plans, banking services featuring the provision of certificates of deposit, individual retirement account services involving self-directed IRAs and, lease purchase loans for automobiles
Please let me know if I have your consent to enter the identification above.
I can suggest the following form of the disclaimer:
Disclaimer: No claim is made to the exclusive right to use "A DIVISION OF" and "BANK" apart from the mark as shown.
Please let me know if I have your consent to enter the disclaimer above.
If we are able to resolve this issue by May 30, 2019, I will be able to enter the changes via Examiner’s Amendment in lieu of issuing a refusal via Office action. Please be sure to sign all e-mail communications with your full name, for the record.
Sincerely,
Amanda Rosen
/Amanda Rosen/
Attorney Advisor, Law Office 121
Phone: 571-270-5984
Email: Amanda.Rosen@uspto.gov
Please be advised that Relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit: http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
--------------------------------------------------------------------
This e-mail message and any files transmitted with it are subject to attorney-client privilege and contain confidential information intended only for the person(s) to whom this email message is addressed. If you have received this e-mail message in error, please notify the sender immediately by telephone or e-mail and destroy the original message without making a copy. Thank you.
Neither this information block, the typed name of the sender, nor anything else in this message is intended to constitute an electronic signature unless a specific statement to the contrary is included in this message.--------------------------------------------------------------------
This e-mail message and any files transmitted with it are subject to attorney-client privilege and contain confidential information intended only for the person(s) to whom this email message is addressed. If you have received this e-mail message in error, please notify the sender immediately by telephone or e-mail and destroy the original message without making a copy. Thank you.
Neither this information block, the typed name of the sender, nor anything else in this message is intended to constitute an electronic signature unless a specific statement to the contrary is included in this message.--------------------------------------------------------------------
This e-mail message and any files transmitted with it are subject to attorney-client privilege and contain confidential information intended only for the person(s) to whom this email message is addressed. If you have received this e-mail message in error, please notify the sender immediately by telephone or e-mail and destroy the original message without making a copy. Thank you.
Neither this information block, the typed name of the sender, nor anything else in this message is intended to constitute an electronic signature unless a specific statement to the contrary is included in this message.