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)

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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. 88374263 BASK(Standard Characters, see http://uspto.report/TM/88374263/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant, Texas Capital Bank, N.A., respectfully submits this Response to the Office Action that issued on July 22, 2019, with respect to U.S. Trademark Application Serial No. 88374263 for the mark BASK (“Applicant’s Mark”).

1. Amendment to Identification of Services

As requested by the Examining Attorney, Applicant has clarified the services identified in the Application. Accordingly, Applicant has amended the identification of services as follows:

Class 36: banking services; online banking services; financial services, namely, savings account services, checking accounts, money market account, certificate of deposits, and deposits based products; financing services; consumer lending services; debit and credit card services, namely, issuing of credit and debit cards; provision of a website featuring information in the field of banking, financing, and financial services; reward and award program services in the nature of an incentive awards program whereby awards or rewards are earned from a bank account or a debit card or a credit card.

1. Likelihood of Confusion Under Section 2(d)

The Examining Attorney has refused registration of Applicant’s Mark on the grounds that there is a likelihood of confusion between Applicant’s Mark and U.S. Registration Nos. 3952728, 4373220, 4970024, 4970025, 5075133, 5090621, 5161939, 5247825, and 5687201 (the “Cited Marks”).  The significant amendments made to Applicant’s identification of services obviate any likelihood of confusion with the Cited Marks (detailed in the chart below).

Cited Mark/Reg. No.	Relevant Goods/Services
BASK 3952728	Class 41: Providing on-line general feature magazines featuring information concerning lifestyles and culture
BASK 4373220	Class 43: restaurant services, catering and carry out restaurant services
BASK 4970024	Class 43: Hotel and motel services
BASK (stylized) 4970025	Class 43: Hotel and motel services
BASK 5075133	Class 41: Providing beach and swimming facilities; providing relaxation areas for others at festivals, concerts and other entertainment events
BIMBASK 5090621	Class 9: Computer software platforms for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content; Downloadable mobile applications for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content
BASK 5161939	Class 42: Maintenance of computer software for business and individual users; technical support services, namely, troubleshooting in the nature of diagnosing problems with computer hardware, computer software, computer peripherals, and consumer electronics for business and individual users; technical support services, namely, troubleshooting problems with computer software for business and individual users; providing backup services for computer systems, namely, restoration and recovery of computer data for home and small business users; technical consulting services for business and individual users in the field of selection, implementation and use of technology-based services and products, namely, computer hardware and software systems; consultation in the field of computers and consumer electronics; providing information and online information about computers, computer hardware and software; providing online tools and downloadable software to check for viruses, security threats, internet connection optimization and other trouble shooting and technology tips; providing an interactive website featuring technology that enables users to access tech support, IT support, repair and installation services, data backup services, security and networking services, and virus and spyware removal services; computer hardware and software consulting services; computer virus protection services; installation, set-up and repair services for computer software
BASK IN THE SUN 5247825	Class 43: Hotel and motel services; making temporary lodging reservations for others
BASK 5687201	Class 36: Leasing of apartments

 

In contrast to the Cited Marks, Applicant’s amended identification narrowly covers banking, financing, credit and debit cards, and related financial services in Class 36.  Thus, Applicant’s amended services do not overlap, encompass, or otherwise relate to the services covered by the Cited Marks, which cover entirely dissimilar offerings—online magazines, restaurant services, hotel and motel services, beach, swimming, and relaxation facilities, software-related offerings, and apartment leasing.  To be similar, the respective offerings need to be related in some manner, or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the goods or services originate from the same source.  See Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 U.S.P.Q.2d 1584, 1597 (TTAB 2012); TMEP 1207.01(a)(ii).  Here, the respective offerings are so different that no likelihood of confusion exists between Applicant’s Mark and the Cited Mark.  If anything, some of the Cited Marks are closer to one another—e.g., BASK for restaurant services and BASK for hotel services—than Applicant’s Mark is to any of the Cited Marks.

Conclusion

Thus, in light of the significant amendments made to Applicant’s identification of services, Applicant respectfully requests that the Examining Attorney reconsider his position and allow this Application to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for banking services; online banking services; financial services; financing services; lending services; mortgage services; investment services; fund transfer services; debit and credit card services; real estate services; treasury services; insurance services; trust and estate management services; informational services; consulting services; analytical services; business services; website, portal, database, and platform services; provision of a website; telecommunication and transmission services; reward and award program services; research and development services; downloadable software; non-downloadable software; mobile application software
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: banking services; online banking services; financial services; financial services, namely, savings account services, checking accounts, money market account, certificate of deposits, and deposits based products; financing services; lending services; consumer lending services; mortgage services; debit and credit card services, namely, issuing of credit and debit cards; investment services; provision of a website featuring information in the field of banking, financing, and financial services; fund transfer services; reward and award program services in the nature of an incentive awards program whereby awards or rewards are earned from a bank account or a debit card or a credit card.; debit and credit card services; real estate services; treasury services; insurance services; trust and estate management services; informational services; consulting services; analytical services; business services; website, portal, database, and platform services; provision of a website; telecommunication and transmission services; reward and award program services; research and development services; downloadable software; non-downloadable software; mobile application softwareClass 036 for banking services; online banking services; financial services, namely, savings account services, checking accounts, money market account, certificate of deposits, and deposits based products; financing services; consumer lending services; debit and credit card services, namely, issuing of credit and debit cards; provision of a website featuring information in the field of banking, financing, and financial services; reward and award program services in the nature of an incentive awards program whereby awards or rewards are earned from a bank account or a debit card or a credit card.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

The applicant's current attorney information: David A. Bell. David A. Bell of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVE; SUITE 700
      DALLAS, Texas 75219
      US
The docket/reference number is 20372.TBD.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

The applicants proposed attorney information: David A. Bell. David A. Bell of HAYNES AND BOONE, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2323 VICTORY AVE; SUITE 700
      DALLAS, Texas 75219
      United States
The docket/reference number is 20372.162.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

David A. Bell submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: DAVID A. BELL. DAVID A. BELL of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVE; SUITE 700
      DALLAS, Texas 75219
      US
The docket/reference number is 20372.TBD.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

The applicants proposed correspondence information: David A. Bell. David A. Bell of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVE; SUITE 700
      DALLAS, Texas 75219
      United States
The docket/reference number is 20372.162.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com; david.bell@haynesboone.com; katharyn.zagorin@haynesboone.com; veronica.broadway@haynesboone.com; bianca.caraveo@haynesboone.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_4162356-181624386_._BASK_Declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Matt Quale
Signatory's Position: EVP
Signatory's Phone Number: XXX-XXX-XXXX


Response Signature
Signature: /Katharyn Zagorin/     Date: 01/22/2020
Signatory's Name: Katharyn Zagorin
Signatory's Position: Associate Attorney, Haynes and Boone, LLP, Texas Bar Member

Signatory's Phone Number: 214-651-5897

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.

Mailing Address:    DAVID A. BELL
   HAYNES AND BOONE, LLP
   
   2323 VICTORY AVE; SUITE 700
   DALLAS, Texas 75219
Mailing Address:    David A. Bell
   HAYNES AND BOONE, LLP
   2323 VICTORY AVE; SUITE 700
   DALLAS, Texas 75219
        
Serial Number: 88374263
Internet Transmission Date: Wed Jan 22 21:32:37 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-202001222132374361
28-88374263-70070cda41515cd1e726ebb7aec6
e4473c5896e6beccc276cf7cec5b5b14e23bc-N/
A-N/A-20200122212751332176