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. 88412696 TEAM GET IT DONE(Standard Characters, see http://uspto.report/TM/88412696/mark.png) has been amended as follows:

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

COMPARISON OF THE MARKS: In comparing the applied-for mark with the registered mark, there are distinct differences that will distinguish the marks in the perception of a consumer. The marks are not identical. If the previously-registered mark was simply "Get It Done" (it is not, which is addressed below), it is true that the applied-for mark would encompass the registered mark. However, since the three shared words are simple and mundane in structure and meaning, the addition of the word "team" gives an entirely different perception to the mark, particularly since "team" is the primary and predominant word. The word "team" has a forthcoming definition and conveys strong feelings of a group of people. Neither "get", "it", nor "done" carry a strong definition or mental picture sufficient to detract from "team," therefore negating potential confusion. Secondly, the inclusion of the periods in the previously-registered mark does affect the overall similarity of the marks in terms of commercial impression. The first period creates an entirely different meaning by splitting the mark into two phrases, "get it" and "done" when read or spoken aloud. The attached evidence from onlineslangdictionary.com defines "get it," a phrase used in vernacular as a general statement of encouragement. The entire phrase "get it done," as listed in the application, carries the different meaning of seeing a project through to completion. The latter is the intention of the use of the applied-for mark. COMPARISON OF THE GOODS AND SERVICES: The examining attorney argues that the same entity commonly provides under the same mark mortgage banking and related services as identified in the application as well as real estate brokerage services of the type identified in U.S. Registration No. 5031210. However, the provided evidence from BankofAmerica.com, Chase.com, and SunTrust.com does not establish this. In the case of Chase.com and SunTrust.com, no real estate services are offered anywhere on the website. Any person viewing these sites would understand that there is no implication that these entities offer real estate services to a consumer. The casual mention of the word "real estate" does not establish that the entity offers real estate services. All mentions of "real estate services" are for the suggestion that the buyer establish a relationship with a real estate agent from a different entity, as shown in the evidence provided by the examining attorney. To further establish this, evidence is attached from the same page of Chase.com accessed by the examining attorney that reads under "Finding the right real estate agent": "You can ask for recommendations from family, friends, your Home Lending Advisor or other people whose opinions you value." Clearly, Chase.com is not offering Real Estate Services. In the case of BankofAmerica.com, it is obvious that a third party is providing the mentioned real estate services, not the entity itself, as shown in the attached evidence. No where does a bank itself employ real estate agents or provide real estate services in any capacity. This establishes that the real estate services identified on the previous registration are not sufficiently related to the mortgage lending services in the application. In addition, the goods or services claimed by the previous registrant and present application are not related or marketed in such a way that they would be encountered by the same persons. The previous mark is registered under the classes for Real Estate Brokerage; Real Estate Services, namely rental, brokerage, leasing, and management of commercial property, offices, and office space. "Commercial" is the key factor that will separate the persons encountering the marks. To further distinguish, the application is revised to specify Residential Mortgage Lending Services. A person looking to secure a mortgage for a residence will never be simultaneously seeking out real estate services for commercial properties unless coincidentally for their profession. As shown in the evidence, the clients listed on the website of the registrant of the conflicting mark are exclusively large companies. The persons seeking a residential mortgage as offered by the applicant are individual persons not representing a company. The industries are completely unrelated, and their customers do not overlap. In the case that a single entity does offer both residential mortgage services and commercial loans, the commercial loan is never referred to as a "mortgage," further distinguishing commercial real estate from residential mortgage loans. See attached evidence from BankofAmerica.com. For the three aforementioned reasons, the goods and services offered by the registrant of the registered mark and the applicant are not sufficiently related to cause confusion between the marks.

EVIDENCE
Evidence in the nature of As described in the arguments: 1. The definition of "get it" from onlineslangdictionary.com 2. Chase.com article on Real Estate Agents from examining attorney 3. Continuation of Chase.com article showing that Chase.com does not offer Real Estate Services 4. BankOfAmerica.com Real Estate Center showing that it is offered by a third party 5. MetroCommercial.com clientele, not marketing to individual persons 6. BankOfAmerica.com commercial lending center with no mention of the word mortgage has been attached. Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Mortgage banking; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Mortgage lending; Mortgage refinancing; Mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; Financial services, namely, mortgage refinancing
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 09/01/2011 and first used in commerce at least as early as 12/29/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Mortgage banking; Residential Mortgage banking; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Residential Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Mortgage lending; Residential Mortgage lending; Mortgage refinancing; Residential Mortgage refinancing; Mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; Residential Mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; Financial services, namely, mortgage refinancing; Financial services, namely, residential mortgage refinancingClass 036 for Residential Mortgage banking; Residential Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Residential Mortgage lending; Residential Mortgage refinancing; Residential Mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; Financial services, namely, residential mortgage refinancing
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 09/01/2011 and first used in commerce at least as early as 12/29/2016 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /James J Ryan/     Date: 11/19/2019
Signatory's Name: James Ryan
Signatory's Position: Owner

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

        
Serial Number: 88412696
Internet Transmission Date: Tue Nov 19 17:07:48 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20191119170748335563-88412696-
70064369a35adde1d468784203b54ab4d8f9e690
6a2988d76aaa5aa639fc2576e9-N/A-N/A-20191
119162017347543