Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  April 14, 2020

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on September 3, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: substitute specimen required in Class 35.  See TMEP §§706, 711.02. 

 

In a previous Office action dated September 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services, and disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  applicant has disclaimed the descriptive wording in the mark.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

            • SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

            • NEW ISSUE: SUBSTITUTE SPECIMEN REQUIRED IN CLASS 35

            • THE IDENTIFICATION OF SERVICES MUST BE AMENDED

 

Applicant must respond to all issues raised in this Office action and the previous September 3, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5497184 and 3497447.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied-for mark is E EVANS BANK with design identified for “Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans; compliance services, namely, financial record-keeping for regulatory compliance purposes” and “Banking services; merchant banking services; mortgage banking services; mortgage lending services; mortgage refinancing services; commercial lending services; consumer lending services; financing and loan services; financial advising services, namely, creating personalized strategies to achieve financial goals for clients and prospective clients; financial analysis services; financial consultation services; financial asset management services; financial planning services; financial portfolio management services; financial research services; financial risk management services; financial trust administration services; financial trust operations services; financial trust planning services; financial trust and wealth management services; investment advisory services; investment brokerage services; investment management services; investment of funds for others; securities and investment brokerage services; insurance agency services; insurance consultation services; debit card services, namely, debit card transaction processing services; benefits consulting, namely, providing counseling and consulting in the field of healthcare insurance benefits; benefits consulting, namely, providing counseling and consulting in the field of retirement plan benefits; government banking, namely, banking; public financing, namely financing and loan services; cash management services; compliance services, namely, mortgage compliance consulting services concerning financial requirements for mortgages for mortgage lenders and servicers and mortgage brokers, all of the above excluding financial investment in the field of real estate including existing buildings or apartments and real estate investment pertaining to existing buildings or apartments”.

 

U.S. Registration No. 5497184 EVANS is identified for “Appraisal of real estate including existing buildings or apartments; Assessment and management of real estate including existing buildings or apartments; Evaluation of real property including existing buildings or apartments; Financial investment in the field of real estate including existing buildings or apartments; Financial valuation of personal property and real estate including existing buildings or apartments; Housing services, namely, assisting others in real property acquisition and consumer financing to facilitate ownership of existing buildings or apartments; Land acquisition, namely, real estate brokerage pertaining to existing buildings or apartments; Leasing of real estate including existing buildings or apartments; Leasing of real property including existing buildings or apartments; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information pertaining to existing buildings or apartments; Providing information pertaining to existing buildings or apartments in the field of real estate via the Internet; Providing online information, namely, information about charitable monetary giving in the field of real estate; Providing real estate listings and real estate information pertaining to existing buildings or apartments via the Internet; Real estate acquisition services pertaining to existing buildings or apartments; Real estate agencies pertaining to existing buildings or apartments; Real estate appraisal pertaining to existing buildings or apartments; Real estate brokerage pertaining to existing buildings or apartments; Real estate consultancy pertaining to existing buildings or apartments; Real estate consultation pertaining to existing buildings or apartments; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate escrow services; Real estate investment pertaining to existing buildings or apartments; Real estate listing pertaining to existing buildings or apartments; Real estate management pertaining to existing buildings or apartments; Real estate management consultation pertaining to existing buildings or apartments; Assisting others in real estate procurement pertaining to existing buildings or apartments; Real estate valuations; Real estate valuation services”.

 

U.S. Registration No. 3497447 EVANS is identified for “Appraisal of real estate including existing buildings or apartments; Assessment and management of real estate including existing buildings or apartments; Evaluation of real property including existing buildings or apartments; Financial investment in the field of real estate including existing buildings or apartments; Financial valuation of personal property and real estate including existing buildings or apartments; Housing services, namely, assisting others in real property acquisition and consumer financing to facilitate ownership of existing buildings or apartments; Land acquisition, namely, real estate brokerage pertaining to existing buildings or apartments; Leasing of real estate including existing buildings or apartments; Leasing of real property including existing buildings or apartments; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information pertaining to existing buildings or apartments; Providing information pertaining to existing buildings or apartments in the field of real estate via the Internet; Providing online information, namely, information about charitable monetary giving in the field of real estate; Providing real estate listings and real estate information pertaining to existing buildings or apartments via the Internet; Real estate acquisition services pertaining to existing buildings or apartments; Real estate agencies pertaining to existing buildings or apartments; Real estate appraisal pertaining to existing buildings or apartments; Real estate brokerage pertaining to existing buildings or apartments; Real estate consultancy pertaining to existing buildings or apartments; Real estate consultation pertaining to existing buildings or apartments; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate escrow services; Real estate investment pertaining to existing buildings or apartments; Real estate listing pertaining to existing buildings or apartments; Real estate management pertaining to existing buildings or apartments; Real estate management consultation pertaining to existing buildings or apartments; Assisting others in real estate procurement pertaining to existing buildings or apartments; Real estate valuations; Real estate valuation services”.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Similarity of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Therefore, the dominant portion of the applied-for mark is the wording E EVANS BANK.

 

Additionally, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence shows that the wording BANK in the applied-for mark is merely descriptive of or generic for applicant’s services, “Banking services; merchant banking services; mortgage banking services; mortgage lending services; mortgage refinancing services; commercial lending services; consumer lending services; financing and loan services; financial advising services; financial analysis services; financial consultation services; financial asset management services; financial planning services; financial portfolio management services; financial research services; financial risk management services; financial trust administration services; financial trust operations services; financial trust planning services; trust and wealth management services; investment advisory services; investment brokerage services; investment management services; investment of funds for others; securities and investment brokerage services; insurance agency services; insurance consultation services; debit card services; benefits consulting; government banking; public financing; cash management services; compliance services; human resource services”. See previously attached http://www.merriam-webster.com/dictionary/bank (defined as “an establishment for the custody, loan, exchange, or issue of money, for the extension of credit, and for facilitating the transmission of funds”). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording E EVANS the more dominant element of the mark. Further, the initial wording E merely serves to reinforce the wording EVANS.

 

Finally, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). Here, applicant merely adds the initial E and the wording BANK to the registered mark.  In the present case, the marks are identical in part.

 

Therefore, as the most dominant element of the applied-for mark, EVANS, is identical to the entirety of the registered mark, EVANS, and the marks are identical in-part in sound, appearance, and commercial impression of a surname, the marks are substantially similar. See previously attached http://www.merriam-webster.com/dictionary/Evans.

 

Relatedness of Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The applied-for mark is identified for “Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans; compliance services, namely, financial record-keeping for regulatory compliance purposes” and “Banking services; merchant banking services; mortgage banking services; mortgage lending services; mortgage refinancing services; commercial lending services; consumer lending services; financing and loan services; financial advising services, namely, creating personalized strategies to achieve financial goals for clients and prospective clients; financial analysis services; financial consultation services; financial asset management services; financial planning services; financial portfolio management services; financial research services; financial risk management services; financial trust administration services; financial trust operations services; financial trust planning services; financial trust and wealth management services; investment advisory services; investment brokerage services; investment management services; investment of funds for others; securities and investment brokerage services; insurance agency services; insurance consultation services; debit card services, namely, debit card transaction processing services; benefits consulting, namely, providing counseling and consulting in the field of healthcare insurance benefits; benefits consulting, namely, providing counseling and consulting in the field of retirement plan benefits; government banking, namely, banking; public financing, namely financing and loan services; cash management services; compliance services, namely, mortgage compliance consulting services concerning financial requirements for mortgages for mortgage lenders and servicers and mortgage brokers, all of the above excluding financial investment in the field of real estate including existing buildings or apartments and real estate investment pertaining to existing buildings or apartments”.

 

U.S. Registration Nos. 5497184 EVANS and 3497447 EVANS is identified for “Appraisal of real estate including existing buildings or apartments; Assessment and management of real estate including existing buildings or apartments; Evaluation of real property including existing buildings or apartments; Financial investment in the field of real estate including existing buildings or apartments; Financial valuation of personal property and real estate including existing buildings or apartments; Housing services, namely, assisting others in real property acquisition and consumer financing to facilitate ownership of existing buildings or apartments; Land acquisition, namely, real estate brokerage pertaining to existing buildings or apartments; Leasing of real estate including existing buildings or apartments; Leasing of real property including existing buildings or apartments; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information pertaining to existing buildings or apartments; Providing information pertaining to existing buildings or apartments in the field of real estate via the Internet; Providing online information, namely, information about charitable monetary giving in the field of real estate; Providing real estate listings and real estate information pertaining to existing buildings or apartments via the Internet; Real estate acquisition services pertaining to existing buildings or apartments; Real estate agencies pertaining to existing buildings or apartments; Real estate appraisal pertaining to existing buildings or apartments; Real estate brokerage pertaining to existing buildings or apartments; Real estate consultancy pertaining to existing buildings or apartments; Real estate consultation pertaining to existing buildings or apartments; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate escrow services; Real estate investment pertaining to existing buildings or apartments; Real estate listing pertaining to existing buildings or apartments; Real estate management pertaining to existing buildings or apartments; Real estate management consultation pertaining to existing buildings or apartments; Assisting others in real estate procurement pertaining to existing buildings or apartments; Real estate valuations; Real estate valuation services”.

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “investment advisory services; investment brokerage services; investment management services; investment of funds for others; securities and investment brokerage services”, which presumably encompasses all services of the type described, including registrant’s more narrow “Financial investment in the field of real estate including existing buildings or apartments; … Real estate investment pertaining to existing buildings or apartments”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). 

 

Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The attached Internet evidence, consisting of firms which provide various banking and real estate services, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. See previously attached http://www.rbfcu.org/banking (banking), http://www.rbfcu.org/home-loans-realty/homebuying-selling-services (real estate services), http://www.rbfcu.org/home-loans-realty/homebuying-selling-services/realty-services (realty services), http://www.rbfcu.org/home-loans-realty/homebuying-selling-services/home-appraisal-services (assessment and valuation services); http://alliedpropertygroup.net/financial-services/ (financial advising and analysis services), http://alliedpropertygroup.net/real-estate-services/, http://alliedrealtyinc.net/#services (property management, leasing services), http://alliedpropertygroup.net/associationmanagement/ (real estate association management); http://www.securitysavingsbank.com/personal-banking (banking services), http://www.securitysavingsbank.com/loan-center (loans), http://www.securitysavingsbank.com/insuance-security-realty/insurance-services (insurance), http://www.securitysavingsbank.com/insuance-security-realty/real-estate-services (real estate services), http://www.securitysavingsbank.com/real-estate/ (online real estate listing); http://telacu.com/telacu-family-of-companies/financial-services/community-commerce-bank/ (banking services), http://www.ccombank.com/Home/SBALoans (real estate loans), http://telacu.com/telacu-family-of-companies/real-estate-management/ (real estate services); http://www.usaa.com/?akredirect=true (banking, insurance, and investments), http://www.usrealco.com/, http://www.usrealco.com/investmentManagement/default.aspx (real estate invest management), http://www.usrealco.com/devAndAcq/acquisitions.aspx (real estate acquisitions), http://www.usrealco.com/devAndAcq/propertiesForSale.aspx (real estate listings), http://www.usrealco.com/commercialMortgageLending/default.aspx (commercial mortgage lending). Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Applicant’s Arguments

 

In their response to the Office action, applicant argued that the design and wording “BANK” in applicant’s mark distinguish the marks, that applicant and registrant’s services are different and applicant’s services have been amended, that the marks would not be encountered by the same customers, that registrant’s customers are sophisticated and would not be confused, and that the marks have existed concurrently for a long time without actual confusion.

 

The trademark examining attorney has read applicant’s arguments against the refusal and found them unpersuasive. See TMEP §713.02. If a final Office action is issued, the trademark examining attorney will fully address applicant’s response with supplemental arguments and additional evidence.

 

Conclusion

 

For the above reasons, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SUBSTITUTE SPECIMEN REQUIRED IN CLASS 35

 

Webpage specimen does not include required URL and date printed/accessed.  Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce.  See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.

 

(2)       Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  Applicant must also submit the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “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 or prior to the filing of the amendment to allege use.”

 

(3)       Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.  

 

PLEASE NOTE: If, as indicated in the requirement to amend the identification of services below, applicant reclassifies the services “Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans” to Class 36, applicant will be required to submit a new specimen showing the mark in use with services properly classified in Class 35.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

THE IDENTIFICATION OF SERVICES MUST BE AMENDED

 

Applicant has classified “Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans” in International Class 35; however, the proper classification is International Class 36.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, (2) deleting “Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans” from 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.

 

Suggested Amendment

 

The wording with additions in bold in the identification of goods and services is indefinite and must be clarified because the nature of the goods and services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate, with suggested changes in bold:

 

Class 35: Compliance services, namely, financial record-keeping for regulatory compliance purposes

 

Class 36: Banking services; merchant banking services; mortgage banking services; mortgage lending services; mortgage refinancing services; commercial lending services; consumer lending services; financing and loan services; financial advising services, namely, financial planning in the nature of creating personalized strategies to achieve financial goals for clients and prospective clients; financial analysis services; financial consultation services; financial asset management services; financial planning services; financial portfolio management services; financial research services; financial risk management services; financial trust administration services; financial trust operations services; financial trust planning services; financial trust services, namely, estate trust management; wealth management services; investment advisory services; investment brokerage services; investment management services; investment of funds for others; securities and investment brokerage services; insurance agency services; insurance consultation services; debit card services, namely, debit card transaction processing services; benefits consulting, namely, providing counseling and consulting in the field of healthcare insurance benefits; benefits consulting, namely, providing counseling and consulting in the field of retirement plan benefits; government banking, namely, banking; public financing, namely financing and loan services; cash management services; compliance services, namely, mortgage compliance consulting services concerning financial requirements for mortgages for mortgage lenders and servicers and mortgage brokers, all of the above excluding financial investment in the field of real estate including existing buildings or apartments and real estate investment pertaining to existing buildings or apartments; Benefits consulting, namely, financial management and administration of employee benefit plans, namely, healthcare insurance plans, employee pension plans, retirement plans, profit-sharing and money purchase plans, pension trust services, and 401K plans

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

INFORMATION REGARDING THIS APPLICATION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Michael Larkey

/Michael Larkey/

Trademark Examining Attorney

Law Office 116

(571) 270-5492

michael.larkey@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 14, 2020 for

U.S. Trademark Application Serial No. 88460101

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Michael Larkey

/Michael Larkey/

Trademark Examining Attorney

Law Office 116

(571) 270-5492

michael.larkey@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 14, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”