To: | Ziegler Capital Management, LLC (tmdocket@arentfox.com) |
Subject: | U.S. Trademark Application Serial No. 88480414 - ZCM - 039128.00002 |
Sent: | August 05, 2019 04:39:50 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88480414
Mark: ZCM
|
|
Correspondence Address: |
|
Applicant: Ziegler Capital Management, LLC
|
|
Reference/Docket No. 039128.00002
Correspondence Email Address: |
|
PRIORITY ACTION
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: August 05, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On August 5, 2019, the examining attorney and Luna Samman, applicant’s attorney, discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
REQUIREMENT – IDENTIFICATION OF SERVICES
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below
offers guidance and/or shows the changes being proposed for the identification of services. If there is wording in the applicant’s
version of the identification of services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 035: cost control, namely, cost containment in the field of fund investment and investment portfolio construction
Class 036: Financial investment services, namely, financial management of investments; investment portfolio construction, namely, financial portfolio management;
investment risk control, namely, financial risk management; financial risk management; fund investment consultation;, investment consultation;, investment
advice;, funds investment;, financial analysis and consultation; financial analysis and consultation, namely, providing macroeconomic financial analysis strategy advice;
financial analysis and consultation based on a cost control model; cost control, namely, cost containment in the field of fund investment and investment portfolio construction; mutual
fund investment; mutual fund brokerage; mutual fund distribution; mutual fund investment consultation, advice and analysis; providing information on the topics of mutual funds and mutual fund
investment, fund investment consultation, investment consultation, investment advice, funds investment, financial analysis and consultation via a global computer network
See TMEP §§1402.01, 1402.03.
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.
REQUIREMENT – MULTIPLE-CLASS APPLICATION
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 036; and applicant needs a specimen for class 035. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each requirement in this Office action. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
How to respond. Click to file a response to this nonfinal 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 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.
Hansrajh, Keton
/Keton Hansrajh/
Trademark Examining Attorney
Law Office 128
(571) 272-3396
keton.hansrajh@uspto.gov
RESPONSE GUIDANCE