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) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88411215 |
LAW OFFICE ASSIGNED | LAW OFFICE 108 |
MARK SECTION | |
MARK | http://uspto.report/TM/88411215/mark.png |
LITERAL ELEMENT | FINANCIAL OPERATING REPORT |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) | |
Applicant respectfully disagrees with the Examining Attorney's conclusion that the applied-for mark FINANCIAL OPERATING REPORT should be refused registration because of a likelihood of confusion with the registered trademark FINANCIAL OPERATIONS NETWORKS. The two three-word trademarks have only one word in common, that of "financial." The two remaining words in Applicant's mark are "operating report," while the two remaining words in Registrant's marks are "operations networks." Comparing the two marks, especially the words following "financial," it is clear that they are not confusingly similar. Only an individual who does not understand the meaning or pronunciation of "operating report" as opposed to "operations networks" would find the two marks confusingly similar or would be confused by their similarities, of which there are almost none. Likewise, the services of the two marks are not so related that an individual would conclude that they originated from the same source. The business consultation services provided in connection with FINANCIAL OPERATING REPORT are those in the field of "healthcare retail food service operations." The services provided in connection with FINANCIAL OPERATIONS NETWORKS are entirely different, unrelated to healthcare retail food service operations. As amended in this Response, the services are further clarified and divided into two separate international classes, further demonstrating the remote, if any, link to Registrant's services. Accordingly, Applicant respectfully requests that the initial refusal to register the trademark on the ground of likelihood of confusion be withdrawn. | |
GOODS AND/OR SERVICES SECTION (035)(current) | |
INTERNATIONAL CLASS | 035 |
DESCRIPTION | |
Business consultation services in the field of healthcare retail food service operations, namely, providing non-downloadable software for use in healthcare food service operations for improvement and control of cost management | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 12/31/2002 |
FIRST USE IN COMMERCE DATE | At least as early as 12/31/2002 |
GOODS AND/OR SERVICES SECTION (035)(proposed) | |
INTERNATIONAL CLASS | 035 |
TRACKED TEXT DESCRIPTION | |
FINAL DESCRIPTION | |
Business consultation services in the field of healthcare retail food service operations, namely, providing business cost management. | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 12/31/2002 |
FIRST USE IN COMMERCE DATE | At least as early as 12/31/2002 |
GOODS AND/OR SERVICES SECTION (042)(class added) | |
INTERNATIONAL CLASS | 042 |
DESCRIPTION | |
Providing online non-downloadable software in the field of healthcare retail food operations for improvement and control of cost management. | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 12/31/2002 |
FIRST USE IN COMMERCE DATE | At least as early as 12/31/2002 |
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 | SPN0-66281658-20191209162914757428_._FINANCIAL_OPERATING_REPORT_SCREENSHOT.pdf |
CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\884\112\88411215\xml5\ROA0002.JPG |
ORIGINAL PDF FILE | SPN0-66281658-20191209162914757428_._FINANCIAL_OPERATING_REPORT_BROCHURE.pdf |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\884\112\88411215\xml5\ROA0003.JPG |
\\TICRS\EXPORT17\IMAGEOUT17\884\112\88411215\xml5\ROA0004.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\884\112\88411215\xml5\ROA0005.JPG | |
SPECIMEN DESCRIPTION | User's computer screenshot of FINANCIAL OPERATING REPORT; promotional brochure |
ADDITIONAL STATEMENTS SECTION | |
DISCLAIMER | No claim is made to the exclusive right to use REPORT apart from the mark as shown. |
MISCELLANEOUS STATEMENT | Applicant believes the specimens previously provided make it clear to the consumer that he or she will be using software to assist in the conduct of healthcare retail food service operations. Applicant has attached additional specimens to show the use of the trademark on a user's computer screen and to show the description of the services to be provided to the user. |
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
ATTORNEY SECTION (current) | |
NAME | Clay A. Tillack |
ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
YEAR OF ADMISSION | NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
FIRM NAME | SCHIFF HARDIN LLP |
STREET | P.O. BOX 06079 |
CITY | CHICAGO |
STATE | Illinois |
POSTAL CODE | 60606-0079 |
COUNTRY | US |
PHONE | 312-258-5758 |
trademarks@schiffhardin.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 38876 |
ATTORNEY SECTION (proposed) | |
NAME | Clay A. Tillack |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
YEAR OF ADMISSION | XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
FIRM NAME | SCHIFF HARDIN LLP |
STREET | P.O. BOX 06079 |
CITY | CHICAGO |
STATE | Illinois |
POSTAL CODE | 60606-0079 |
COUNTRY | United States |
PHONE | 312-258-5758 |
trademarks@schiffhardin.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 38876 |
OTHER APPOINTED ATTORNEY | Christine Feller |
CORRESPONDENCE SECTION (current) | |
NAME | CLAY A. TILLACK |
FIRM NAME | SCHIFF HARDIN LLP |
STREET | P.O. BOX 06079 |
CITY | CHICAGO |
STATE | Illinois |
POSTAL CODE | 60606-0079 |
COUNTRY | US |
PHONE | 312-258-5758 |
trademarks@schiffhardin.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 38876 |
CORRESPONDENCE SECTION (proposed) | |
NAME | Clay A. Tillack |
FIRM NAME | SCHIFF HARDIN LLP |
INTERNAL ADDRESS | 233 South Wacker Drive |
STREET | 233 South Wacker Drive |
CITY | Chicago |
STATE | Illinois |
POSTAL CODE | 60606 |
COUNTRY | United States |
PHONE | 3122585758 |
trademarks@schiffhardin.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 38876 |
PAYMENT SECTION | |
NUMBER OF CLASSES | 1 |
APPLICATION FOR REGISTRATION PER CLASS | 275 |
TOTAL FEES DUE | 275 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Gloria Gibbs/ |
SIGNATORY'S NAME | Gloria Gibbs |
SIGNATORY'S POSITION | Assistant General Counsel |
SIGNATORY'S PHONE NUMBER | 3122585758 |
DATE SIGNED | 12/09/2019 |
RESPONSE SIGNATURE | /Clay A Tillack/ |
SIGNATORY'S NAME | Clay A Tillack |
SIGNATORY'S POSITION | Attorney of Record, Illinois bar member |
SIGNATORY'S PHONE NUMBER | 312-258-5758 |
DATE SIGNED | 12/09/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Mon Dec 09 17:25:33 EST 2019 |
TEAS STAMP | USPTO/ROA-XX.XX.XXX.X-201 91209172533869996-8841121 5-70079967ded38c352f968c6 dff7f607f729cf24a5317ce77 6443d21ab1f85765a-CC-2532 6080-20191209162914757428 |
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) |
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.