To: | Public Financial Management, Inc. (ejs@stevenslee.com) |
Subject: | U.S. Trademark Application Serial No. 88483691 - AGILE MODELING INTELLIGENCE - 104877-28 |
Sent: | September 19, 2019 06:01:56 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88483691
Mark: AGILE MODELING INTELLIGENCE
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Correspondence Address: |
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Applicant: Public Financial Management, Inc.
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Reference/Docket No. 104877-28
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: September 19, 2019
SEARCH RESULTS: 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).
Section 2(e)(1) Refusal – Merely Descriptive
Applicant’s mark is “AGILE MODELING INTELLIGENCE” for “Financial analysis, namely, compiling, analyzing, and projecting statistics, data and other sources of information for financial planning purposes” in International Class 36 and “Non-downloadable computer software for producing financial models” in International Class 42.
The attached evidence from The Free Dictionary demonstrates that “AGILE” is commonly used in connection with software to describe “a set of principles for software development under which requirements and solutions evolve through the collaborative effort of self-organizing cross-functional teams.” Additionally, the attached evidence from Agile Alliance, Cprime, and Search Software Quality demonstrates that “AGILE” is frequently used in connection with software. Additionally, applicant disclaimed “MODELING”, demonstrating that this wording is descriptive. Also, the attached evidence from Lexico demonstrates that “INTELLIGENCE” is defined as “Information in general.” Therefore, in the context of applicant’s services, “AGILE MODELING INTELLIGENCE” immediately conveys to consumers that applicant’s services are performed in accordance with a set of principles, and that the computer software gathers information to produce financial models that are used for financial planning. Thus, the wording “AGILE MODELING INTELLIGENCE” describes a feature or characteristic of applicant’s services.
Based on the evidence and analysis above, applicant’s mark is merely descriptive and must be refused under Section 2(e)(1) of the Lanham Act.
Advisory: Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03. Please note: If applicant amends to the Supplemental Register, then the disclaimer of “MODELING” can be removed.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Applicant should note the following additional ground for refusal.
Duplicate Application Refusal
Mark Description and Color Claim Requirement
The following description is suggested, if accurate: “The mark consists of a green circle with the wording “AGILE MODELING INTELLIGENCE” in black to the right.
The following color claim is suggested, if accurate: “The colors green and black are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Identification Requirement
Applicant has identified the following services:
International Class 36: “Financial analysis, namely, compiling, analyzing, and projecting statistics, data and other sources of information for financial planning purposes”
International Class 42: “Non-downloadable computer software for producing financial models”
International Class 42
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:
International Class 36: [no changes]
International Class 42: Providing online non-downloadable computer software for producing financial models
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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. 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.
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
/Brittany Colton/
Brittany Colton
Examining Attorney
Law Office 127
571-272-2572
brittany.colton@uspto.gov
RESPONSE GUIDANCE