To: | The PNC Financial Services Group, Inc. (docketing@finnegan.com) |
Subject: | U.S. Trademark Application Serial No. 88436475 - CHART - 06373.0722 |
Sent: | February 06, 2020 07:14:41 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. 06373.0722
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: February 06, 2020
This Office action is in response to applicant’s communication filed on January 16, 2020.
The requirement for additional information is maintained and continued. In addition, upon review of the applicant’s response, however, the following new issue must be raised.
ADDITIONAL INFORMATION REQUIREMENT – MAINTAINED
The requirement for additional information about the services is maintained and continued.
Specifically, while the applicant responded to the inquiry pertaining to the significance of the mark as to software, which was raised in question number one in the in additional information requirement in the first Office action, the applicant also limited its response to the second inquiry to the software. However, the second inquiry asked whether “the applicant’s services provide consumers with charts or utilize charts.”
Accordingly, particularly as it pertains to the applicant’s International Class 36 “providing information and financial analysis in the field of commercial real estate; commercial real estate financing services,” the applicant must state whether any of these services will provide consumers with information or analysis in chart form or will 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.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE – NEW ISSUE
Registration is refused because the applied-for mark merely describes a feature and function of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The applicant seeks registration of “CHART”, in standard characters, for use in providing information and financial analysis in the field of commercial real estate; commercial real estate financing services; and providing temporary use of non-downloadable software for financial analysis in the field of commercial real estate and for commercial real estate financing.
As stated in the applicant’s response, the applicant’s software is capable of providing users with financial data in chart form. Presumable, the applicant’s information and financial analysis services and financing services also consumers with or utilize charts. Accordingly, the wording “CHART” in the proposed mark merely describes a function, of the software, and feature, of the International Class 36 information, analysis, and financing services, and registration must be refused under Section 2(e)(1) of the Trademark Act.
QUESTIONS REGARDING THE INSTANT OFFICE ACTION
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
United States Patent & Trademark Office
Law Office 106
571-272-9320
Martha.Fromm@USPTO.gov
RESPONSE GUIDANCE