| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88493335 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88493335/mark.png |
| LITERAL ELEMENT | BANK OF AMERICA CHICAGO 13.1 |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the stylized words "BANK OF AMERICA" to the right of which appears a stylized parallelogram consisting of three pairs of bands above the stylized words "CHICAGO 13.1" where the letter "I" in CHICAGO is represented by a six-pointed star between upper and lower horizontal bars. |
| ARGUMENT(S) | |
|
The Examining Attorney has required that Applicant disclaim the words “CHICAGO 13.1” from the application for its mark BANK OF AMERICA CHICAGO 13.1 & Design for use with “Arranging and conducting athletic competitions, namely, a marathon and/or partial marathons “(“Applicant’s Mark”) on the grounds that the words are descriptive of Applicant’s services. However, through Applicant’s long use and registration of marks containing the word “Chicago” with its marathon services, the word has acquired distinctiveness and should not be disclaimed. Instead, Applicant has amended its application to claim acquired distinctiveness in the word “Chicago” as applied to these services.
Applicant is the owner of U.S. Reg. No. 3,433,982 for CHICAGO MARATHON for “Arranging and conducting athletic competitions, namely, a marathon” and U.S. Reg. No. 4,993,117 for BANK OF AMERICA CHICAGO MARATHON & Design for “Arranging and conducting athletic competitions, namely, a marathon.” Copies of these registrations are attached as Exhibit A. Both of these registrations have claimed acquired distinctiveness in the word “Chicago” under Section 2(f), 15 U.S.C. § 1052(f). Although the current application is based on Applicant’s intent to use its mark, Applicant may assert an acquired distinctiveness claim based on its prior use and registration of marks containing the word “Chicago” with identical services. T.M.E.P. § 1212.09(b) (“An intent-to-use applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services.”). Applicant’s registrations for CHICAGO MARATHON and BANK OF AMERICA CHICAGO MARATHON & Design prove that Applicant has developed acquired distinctiveness in the word “Chicago” as applied to these services, and this distinctiveness will transfer to Applicant’s Mark once use in commerce begins.
Furthermore, Applicant’s CHICAGO MARATHON mark is incontestable and cannot be collaterally attacked on the grounds that it is merely descriptive. The TTAB has held that incontestable marks contained in a mark in a subsequently filed application cannot be the subject of a disclaimer requirement. In re Am. Sail Training Ass’n, 230 USPQ 879 (TTAB 1986) (reversing a requirement that “TALL SHIPS” be disclaimed apart from the mark RETURN OF THE TALL SHIPS in light of the applicant’s incontestable registration for TALL SHIPS for identical services). Similarly, because Applicant is the owner of an incontestable registration for CHICAGO MARATHON it should not be required to disclaim the word “Chicago” in its present mark.
For the reasons given above, Applicant does not believe that disclaimer of the word “Chicago” is proper and requests that the Examining Attorney withdraw the requirement and approve the application for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_66193218253-20191105220654785570_._EXHIBIT_A_-_BOA_CHICAGO_Responses.pdf |
| CONVERTED PDF FILE(S) (7 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\933\88493335\xml5\ROA0008.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A to response |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | CHICAGO has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3433982 and 4993117 |
| ATTORNEY SECTION (current) | |
| NAME | Randel S. Springer |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | WOMBLE BOND DICKINSON (US) LLP |
| STREET | ONE WEST FOURTH STREET |
| CITY | WINSTON-SALEM |
| STATE | North Carolina |
| POSTAL CODE | 27101 |
| COUNTRY | US |
| PHONE | 336-721-3747 |
| FAX | 336-726-6991 |
| tmdocketing@wbd-us.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 50195.2369.3 |
| ATTORNEY SECTION (proposed) | |
| NAME | Randel S. Springer |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | WOMBLE BOND DICKINSON (US) LLP |
| STREET | ONE WEST FOURTH STREET |
| CITY | WINSTON-SALEM |
| STATE | North Carolina |
| POSTAL CODE | 27101 |
| COUNTRY | United States |
| PHONE | 336-721-3747 |
| FAX | 336-726-6991 |
| tmdocketing@wbd-us.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 50195.2369.3 |
| OTHER APPOINTED ATTORNEY | M. Christopher Bolen, Peter B. Bromaghim, Melissa G. Ferrario, William S. Fultz, Nicholas B. Hawkins, Jack B. Hicks, Jennifer Itzkoff, Sarah Anne Keefe, Laura A. Kees, Emily Scheible Whittaker, Michael A. Tobin, Jeffrey S. Whittle |
| CORRESPONDENCE SECTION (current) | |
| NAME | RANDEL S. SPRINGER |
| FIRM NAME | WOMBLE BOND DICKINSON (US) LLP |
| STREET | ONE WEST FOURTH STREET |
| CITY | WINSTON-SALEM |
| STATE | North Carolina |
| POSTAL CODE | 27101 |
| COUNTRY | US |
| PHONE | 336-721-3747 |
| FAX | 336-726-6991 |
| tmdocketing@wbd-us.com; trademarkswinston@wbd-us.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 50195.2369.3 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Randel S. Springer |
| FIRM NAME | WOMBLE BOND DICKINSON (US) LLP |
| STREET | ONE WEST FOURTH STREET |
| CITY | WINSTON-SALEM |
| STATE | North Carolina |
| POSTAL CODE | 27101 |
| COUNTRY | United States |
| PHONE | 336-721-3747 |
| FAX | 336-726-6991 |
| tmdocketing@wbd-us.com; Trademarkswinston@wbd-us.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 50195.2369.3 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Randy Springer/ |
| SIGNATORY'S NAME | Randel S. Springer |
| SIGNATORY'S POSITION | Attorney of Record, NC Bar Member |
| SIGNATORY'S PHONE NUMBER | 336-721-3747 |
| DATE SIGNED | 11/06/2019 |
| RESPONSE SIGNATURE | /Randy Springer/ |
| SIGNATORY'S NAME | Randel S. Springer |
| SIGNATORY'S POSITION | Attorney of record, North Carolina bar member |
| SIGNATORY'S PHONE NUMBER | (336) 721-3747 |
| DATE SIGNED | 11/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Nov 06 10:26:23 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20191106102623467392-8849 3335-700d967951dc6f53df96 3227d95c7977897ca40f726a5 b067624d8a86d118f5b2-N/A- N/A-20191105220654785570 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examining Attorney has required that Applicant disclaim the words “CHICAGO 13.1” from the application for its mark BANK OF AMERICA CHICAGO 13.1 & Design for use with “Arranging and conducting athletic competitions, namely, a marathon and/or partial marathons “(“Applicant’s Mark”) on the grounds that the words are descriptive of Applicant’s services. However, through Applicant’s long use and registration of marks containing the word “Chicago” with its marathon services, the word has acquired distinctiveness and should not be disclaimed. Instead, Applicant has amended its application to claim acquired distinctiveness in the word “Chicago” as applied to these services.
Applicant is the owner of U.S. Reg. No. 3,433,982 for CHICAGO MARATHON for “Arranging and conducting athletic competitions, namely, a marathon” and U.S. Reg. No. 4,993,117 for BANK OF AMERICA CHICAGO MARATHON & Design for “Arranging and conducting athletic competitions, namely, a marathon.” Copies of these registrations are attached as Exhibit A. Both of these registrations have claimed acquired distinctiveness in the word “Chicago” under Section 2(f), 15 U.S.C. § 1052(f). Although the current application is based on Applicant’s intent to use its mark, Applicant may assert an acquired distinctiveness claim based on its prior use and registration of marks containing the word “Chicago” with identical services. T.M.E.P. § 1212.09(b) (“An intent-to-use applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services.”). Applicant’s registrations for CHICAGO MARATHON and BANK OF AMERICA CHICAGO MARATHON & Design prove that Applicant has developed acquired distinctiveness in the word “Chicago” as applied to these services, and this distinctiveness will transfer to Applicant’s Mark once use in commerce begins.
Furthermore, Applicant’s CHICAGO MARATHON mark is incontestable and cannot be collaterally attacked on the grounds that it is merely descriptive. The TTAB has held that incontestable marks contained in a mark in a subsequently filed application cannot be the subject of a disclaimer requirement. In re Am. Sail Training Ass’n, 230 USPQ 879 (TTAB 1986) (reversing a requirement that “TALL SHIPS” be disclaimed apart from the mark RETURN OF THE TALL SHIPS in light of the applicant’s incontestable registration for TALL SHIPS for identical services). Similarly, because Applicant is the owner of an incontestable registration for CHICAGO MARATHON it should not be required to disclaim the word “Chicago” in its present mark.
For the reasons given above, Applicant does not believe that disclaimer of the word “Chicago” is proper and requests that the Examining Attorney withdraw the requirement and approve the application for publication.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
