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. 88396384 BUYBACK ROI(Standard Characters, see http://uspto.report/TM/88396384/mark.png) has been amended as follows:

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

In the Office Action, the registration has been refused under Lanham Act Section 2(e)(1) as being allegedly merely descriptive.  Applicant respectfully traverses this refusal. 

 The mark BUYBACK ROI is a mark consisting of term coined by the Applicant which has been in continuous use since 2011.  Applicant respectfully submits that the combination of terms presented in the mark had not been used in the relevant field of services prior to use by the Applicant.  The combination of terms creates a unique commercial impression and supports a finding that the mark is not merely descriptive.

In addition, through the nearly nine years of continuous use, the mark has been associated with the Applicant and its services.  Numerous third party uses of the mark associate it with the Applicant.  Applicant has filed herewith in Exhibit A, including a representative sample of several of the many third party uses from well established financial and business publications.  In each use, the mark is recognized a providing a services originating from the Applicant. 

When determining descriptiveness, the mark is to be viewed through the eyes of an ordinary reasonable user of the services.  Applicant respectfully submits that in the financial and business field, one would associate the mark BUYBACK ROI with a single source of the services, i.e. the Applicant.  It would not be viewed as merely a descriptive term.  Therefore, Applicant respectfully submits that BUYBACK ROI is not merely descriptive and the 2(e)(1) refusal should be withdrawn.

In the Office Action, the mark has also been refused registration under Lanham Act Sections 1, 2, 3 and 45 for an alleged failure to function as a trademark.  The Examining Attorney contends that the mark shown in the specimen does not function as a service mark because it merely refers to the name of a financial calculation created by Applicant.  Accordingly, the Examining Attorney alleges that consumers would see BUYBACK ROI as a name of a financial calculation and not the source of services listed in the identification.  Applicant respectfully traverses this refusal of registration. 

As set forth above, the mark BUYBACK ROI is a term created by the Applicant to identify its services with regard to providing business and financial information to its clients on how to best spend their capital.  The filed specimen promotes the mark on the front cover of the report and also uses the mark consistently throughout.  Contrary to the Examining Attorney’s contentions, the mark does not merely identify a calculation or number but is instead a comprehensive service which the Applicant provides in order to inform and advise its clients.  This type of service is unique to the Applicant in the industry such that upon seeing the mark, clients and potential clients recognize it as identifying a particular source of the services.

In addition, as the specimen on page 1 indicates that Fortune magazine has featured the service referred to therein as the “BUYBACK ROI ranking” which shows its impact in the financial segment of the market. 

Applicant notes that providing financial indexes or listings is subject to trademark protection and notes, for example, U.S. Registration No. 5913949 for the mark S&P 500 and U.S. Registration No. 1521758.  Therefore, Applicant’s mark is likewise registerable on the Principal Register.

Furthermore, as set forth above, the industry recognizes the mark BUYBACK ROI as a term associated with the Applicant.  See Exhibit A. 

Accordingly, Applicant respectfully submits that the mark BUYBACK ROI functions as a trademark and that the specimen of record properly establishes a trademark use of the mark.

Applicant has also filed herewith a substitute specimen which consists of a presentation given to prospective clients.  The document entitled “Financial Strategy and Capital Allocation” features on page 5 the BUYBACK ROI service that it developed in order to assist companies at to make use of capital in a manner most beneficial to shareholders.  Acceptance of this substitute specimen is respectfully requested.

            Applicant respectfully submits that the refusal of registration under Lanham Act Sections 1, 2, 3 and 45 be withdrawn.

In view of the comments set forth above, Applicant respectfully requests that the application be moved toward publication.

EVIDENCE
Evidence in the nature of Third party uses of the mark has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consultation services; Providing business information; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to business matters; Consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitability
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/30/2011 and first used in commerce at least as early as 06/30/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business consultation services; providing business information; business investigations, evaluations, expert appraisals, information and research; expert evaluations and reports relating to business matters; consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; business consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitabilityClass 035 for Business consultation services; providing business information; business investigations, evaluations, expert appraisals, information and research; expert evaluations and reports relating to business matters; consultancy services regarding business strategies with regard to corporate stock repurchases; business consulting services in the field of corporate share repurchases
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/30/2011 and first used in commerce at least as early as 06/30/2011 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Presentation material for potential clients and marketing material .
"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:
SPU0-20616132204-20200203172726958159_._2777_2_Subsitute_Specimen_No1.pdf
Converted PDF file(s) ( 13 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Original PDF file:
SPU0-20616132204-20200203172726958159_._2777_2_Substitute_Specimen_No2.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for Financial consulting services in the field of corporate share repurchases; providing financial counseling to businesses regarding the financial impacts associated with share repurchases; providing financial advising to companies as to timing share repurchases to enhance profitability
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/30/2011 and first used in commerce at least as early as 06/30/2011 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 036 . The specimen(s) submitted consists of Presentation material for potential clients and marketing material .
"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:
SPN0-20616132204-20200203172726958159_._2777_2_SPECIMEN_1_CLASS_35.pdf
Converted PDF file(s) ( 9 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Original PDF file:
SPN0-20616132204-20200203172726958159_._2777_2_Specimen_2_CLASS_35.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Original PDF file:
SPN0-20616132204-20200203172726958159_._2777_2_Subsitute_Specimen_No1.pdf
Converted PDF file(s) ( 13 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Original PDF file:
SPN0-20616132204-20200203172726958159_._2777_2_Substitute_Specimen_No2.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

The applicant's current attorney information: Anthony E. Bennett. Anthony E. Bennett of HOFFMANN & BARON, LLP, is located at

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      US
The docket/reference number is 2777-2.

The phone number is 516-822-3550.

The fax number is 516-822-3582.

The email address is aebdocket@hbiplaw.com

The applicants proposed attorney information: Anthony E. Bennett. Other appointed attorneys are James F. Harrington, Glenn T. Henneberger,Anthony E. Bennett, Steven T. Zuschlag, John T. Gallagher, Celeste M. Butera, Wayne L. Ellenbogen, Susan A. Sipos, Alexander G. Vodovozov, Mark E. Baron, Kevin E. McDermott, Lauren T. Emr, Linda D. Chin, Ronald J. Baron, and Silvana M. Merlino, each of them of HOFFMANN & BARON, LLP, 6900 Jericho Turnpike, Syosset, NY 11791; and Daniel A. Scola, Jr., Salvatore J. Abbruzzese, Michael I. Chakansky, John S. Sopko, Andrea M. Wilkovich, Stephen J. Brown, Matthew J. Solow, Gie Yoon, and Leila K. Marcovici each of them of HOFFMANN & BARON, LLP, 4 Century Drive, Parsippany, NJ 07054-4406.. Anthony E. Bennett of HOFFMANN & BARON, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      United States
The docket/reference number is 2777-2.

The phone number is 516-822-3550.

The fax number is 516-822-3582.

The email address is aebdocket@hbiplaw.com

Anthony E. Bennett 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: ANTHONY E. BENNETT. ANTHONY E. BENNETT of HOFFMANN & BARON, LLP, is located at

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      US
The docket/reference number is 2777-2.

The phone number is 516-822-3550.

The fax number is 516-822-3582.

The email address is aebdocket@hbiplaw.com

The applicants proposed correspondence information: Anthony E. Bennett. Anthony E. Bennett of HOFFMANN & BARON, LLP, is located at

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      United States
The docket/reference number is 2777-2.

The phone number is 516-822-3550.

The fax number is 516-822-3582.

The email address is aebdocket@hbiplaw.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /anthony e. bennett/      Date: 02/03/2020
Signatory's Name: Anthony E. Bennett
Signatory's Position: Attorney of record, New York Bar member
Signatory's Phone Number: 516-822-3550


Response Signature
Signature: /anthony e. bennett/     Date: 02/03/2020
Signatory's Name: Anthony E. Bennett
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 516-822-3550

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:    ANTHONY E. BENNETT
   HOFFMANN & BARON, LLP
   
   6900 JERICHO TURNPIKE
   SYOSSET, New York 11791
Mailing Address:    Anthony E. Bennett
   HOFFMANN & BARON, LLP
   6900 JERICHO TURNPIKE
   SYOSSET, New York 11791
        
RAM Sale Number: 88396384
RAM Accounting Date: 02/03/2020
        
Serial Number: 88396384
Internet Transmission Date: Mon Feb 03 18:58:26 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202002031858264
00582-88396384-70066c6717c1649ced7934c2e
5bedb84c59218090dc62a66d2cc1e3dff05fb7a3
-CC-58240548-20200203185113930257