To: | The PNC Financial Services Group, Inc. (docketing@finnegan.com) |
Subject: | U.S. Trademark Application Serial No. 88436475 - CHART - N/A |
Sent: | July 16, 2019 04:09:33 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88436475
Mark: CHART
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Correspondence Address: FINNEGAN HENDERSON FARABOW GARRETT & DUN
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Applicant: The PNC Financial Services Group, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 16, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE RECORDS – POSSIBLE SUPPLEMENTAL SEARCH
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Please note, however, that a supplemental search may be performed and additional issues may be raised upon receipt of the applicant’s response to the following issues.
ADDITIONAL INFORMATION REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
The applicant must also respond to the following specific inquiries:
(1) Will the applicant’s software be used in producing charts or provide the user with charts?
(2) Will the applicant’s services provide consumers with charts or utilize charts?
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition, some of the goods and services have or have been misclassified. The applicant must amend the application to properly classify the services and either limit the application to goods and services falling in two classes or add classes to the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Specifically, in International Class 9, the applicant must specify whether the applicant’s “software” is “recorded” or “downloadable” software, in which instance the goods will remain in International Class 9, or if the applicant is “providing temporary use of online non-downloadable” software, in which instance the proper class is International Class 42.
In addition, the applicant must clarify the subject matter of the services as they pertain to the “analysis” of “real estate” for purposes of determining proper classification. Note that “commercial real estate marketing analysis” would be classified in International Class 35.
Finally, the applicant must clarify the nature of the “finance” services.
Applicant may adopt the following identification, if accurate:
“downloadable commercial real estate application software,” in International Class 9;
“providing information and financial analysis in the field of commercial real estate; commercial real estate financing services,” in International Class 36.
Trademark ID Manual: For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that may be classified in at least three classes; however, applicant submitted fees sufficient for only two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
QUESTIONS REGARDING THE INSTANT OFFICE ACTION
If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Martha L. Fromm/
Trademark Examining Attorney
U.S. Patent and Trademark Office - Law Office 106
571-272-9320
Martha.Fromm@USPTO.gov
RESPONSE GUIDANCE