Response to Office Action

CORCORAN

Corcoran Group LLC

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88349870
LAW OFFICE ASSIGNED LAW OFFICE 104
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88349870/mark.png
LITERAL ELEMENT CORCORAN
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
The color(s) blue, yellow and pink is/are claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the word Corcoran in a stylized font above a bar line fading from blue to yellow to pink.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 036
DESCRIPTION
real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news, information and user generated content
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 02/13/2018
        FIRST USE IN COMMERCE DATE At least as early as 02/13/2018
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 036
TRACKED TEXT DESCRIPTION
real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services; real estate property management services for condominium associations, homeowner associations, apartment buildings, commercial property, offices, and office space; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news, information and user generated content; providing an interactive web portal in the field of real estate featuring news and information and featuring user generated content in the nature of commentary and information
FINAL DESCRIPTION
real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services for condominium associations, homeowner associations, apartment buildings, commercial property, offices, and office space; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news and information and featuring user generated content in the nature of commentary and information
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 02/13/2018
       FIRST USE IN COMMERCE DATE At least as early as 02/13/2018
       STATEMENT TYPE "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILE SPU0-1-16522538249-20191011134016484388_._CORCORAN_colorbar_b_w_class_36_specimen.pdf
       CONVERTED PDF FILE(S)
       (6 pages)
\\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0003.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0005.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0006.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\498\88349870\xml7\ROA0007.JPG
       SPECIMEN DESCRIPTION screen shots of web pages showing use of the mark
ADDITIONAL STATEMENTS SECTION
COLOR(S) CLAIMED
(If applicable)
The color(s) black, blue, yellow, and pink is/are claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the word "CORCORAN" in a stylized font above a bar line fading from blue to yellow to pink from left to right. The color white appears in the background and is not claimed as a feature of the mark.
MISCELLANEOUS STATEMENT As per phone conversation with Examining Attorney on 10/10/19, the language ''real estate brokerage services, namely, arrangement of title insurance and real estate financing for others" can remain in the specification, as it has been accepted and recently registered in other marks.
SIGNATURE SECTION
DECLARATION SIGNATURE /Luke Barton/
SIGNATORY'S NAME Luke Barton
SIGNATORY'S POSITION Vice President, Business Development
SIGNATORY'S PHONE NUMBER 2035701528
DATE SIGNED 10/16/2019
RESPONSE SIGNATURE /MELISSA BERGER/
SIGNATORY'S NAME Melissa Berger
SIGNATORY'S POSITION Executive Legal Counsel - Intellectual Property, NY & NJ Bar Member
DATE SIGNED 10/16/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Oct 16 12:13:45 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XX.XXX-
20191016121345951284-8834
9870-610f5146ae1148a19fd6
d509253938d935b3117f0a764
ffb6c7331771565d22b271-N/
A-N/A-2019101113401648438
8



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 88349870 CORCORAN (Stylized and/or with Design, see http://uspto.report/TM/88349870/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news, information and user generated content
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/13/2018 and first used in commerce at least as early as 02/13/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services; real estate property management services for condominium associations, homeowner associations, apartment buildings, commercial property, offices, and office space; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news, information and user generated content; providing an interactive web portal in the field of real estate featuring news and information and featuring user generated content in the nature of commentary and informationClass 036 for real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business; real estate brokerage services, namely, arrangement of title insurance and real estate financing for others; real estate property management services for condominium associations, homeowner associations, apartment buildings, commercial property, offices, and office space; real estate agency services; leasing of real estate; real estate appraisal and valuation; real estate rental services, namely, rental of residential housing; providing information in the field of real estate by means of linking the website to other websites featuring real estate information; real estate escrow services; real estate services, namely, rental property management; providing real estate listings and real estate information via the Internet; providing information in the field of real estate via the Internet; commercial and residential real estate agency services; real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; providing a database of information about residential real estate listings in different neighborhoods and communities; real estate consultancy services in association with the valuation, appraisal, brokerage, listing, management, letting and/or leasing of real estate; financial evaluation of real estate; mortgage advisory and administration services, namely, mortgage compliance consulting services concerning financial requirements for mortgages, mortgage financial planning services and mortgage refinancing; providing an interactive web portal in the field of real estate featuring news and information and featuring user generated content in the nature of commentary and information
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/13/2018 and first used in commerce at least as early as 02/13/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 036 . The specimen(s) submitted consists of screen shots of web pages showing use of the mark .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-1-16522538249-20191011134016484388_._CORCORAN_colorbar_b_w_class_36_specimen.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

ADDITIONAL STATEMENTS
Color Claim
The color(s) black, blue, yellow, and pink is/are claimed as a feature of the mark.

Description of mark
The mark consists of the word "CORCORAN" in a stylized font above a bar line fading from blue to yellow to pink from left to right. The color white appears in the background and is not claimed as a feature of the mark.

Miscellaneous Statement
As per phone conversation with Examining Attorney on 10/10/19, the language ''real estate brokerage services, namely, arrangement of title insurance and real estate financing for others" can remain in the specification, as it has been accepted and recently registered in other marks.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.



Signature: /Luke Barton/      Date: 10/16/2019
Signatory's Name: Luke Barton
Signatory's Position: Vice President, Business Development
Signatory's Phone Number: 2035701528


Response Signature
Signature: /MELISSA BERGER/     Date: 10/16/2019
Signatory's Name: Melissa Berger
Signatory's Position: Executive Legal Counsel - Intellectual Property, NY & NJ Bar Member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88349870
Internet Transmission Date: Wed Oct 16 12:13:45 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201910161213459
51284-88349870-610f5146ae1148a19fd6d5092
53938d935b3117f0a764ffb6c7331771565d22b2
71-N/A-N/A-20191011134016484388


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