| 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 | 88563735 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://uspto.report/TM/88563735/mark.png |
| LITERAL ELEMENT | CALROCK |
| 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 CONSISTS OF THREE PARALLEL LINES ARRANGED TO FORM A GENERALLY CIRCULAR SHAPE THAT IS DIVIDED INTO TWO HALVES, WITH THE RIGHT HALF HAVING AN ANGLED APPENDAGE PROTRUDING IN A DOWNWARD-RIGHT DIRECTION AND THE LITERAL ELEMENT CALROCK. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT17\IMAGEOUT 17\885\637\88563735\xml5\ ROA0002.JPG |
| LITERAL ELEMENT | CALROCK |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | NO |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the stylized letters "CR" formed by three parallel lines arranged to form a generally circular shape that is divided into two halves, with the right half having an angled appendage protruding in a downward-right direction appearing next to the stylized wording "CalRock". |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 766 x 250 |
| ARGUMENT(S) | |
|
The Applicant acknowledges the requirement for a new drawing. The Applicant submits herewith a version of the drawing free from pixilation and blurriness. The mark itself remains unchanged. The Applicant further acknowledges the requirement for a clarified description of the mark. The Applicant adopts the description helpfully suggested by the Examiner as follows: The mark consists of the stylized letters “CR” formed by three parallel lines arranged to form a generally circular shape that is divided into two halves, with the right half having an angled appendage protruding in a downward-right direction appearing next to the stylized wording “CalRock”. The Applicant acknowledges the requirement for a clarified identification of services. The Applicant adopts the following description: International Class 036: Providing financial services in the nature of facilitating financial transactions involving commodities and commodity derivatives,
securities, stocks, bonds, equities, futures and options The Applicant notes that the ID Manual of Acceptable Identification of Services indicates that “financial services, namely, assisting others with the completion of financial transactions for stocks, bond, securities and equities” is acceptable. That language is similar to Applicant’s proposed amendment language. Accordingly, the Applicant respectfully submits that the amended language is sufficiently clear inasmuch as it mirrors an acceptable description of services in Class 36. With respect to “enhancing liquidity” and “price discovery,” the Applicant notes that those terms are well-understood “terms of art” in the financial services space. As set forth in TMEP 1402.01, “[a]n identification may include terms of art in a particular field or industry that are definite and limited to a single class, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.” The identification of services provides definitions of “enhancing liquidity” and “price discovery.” For example, the description indicates that “enhancing liquidity” is “also known as increasing the degree to which a financial asset can be quickly bought or sold without affecting the financial asset's price” and that “price discovery” is “also known as determining the price of a financial asset through interactions between buyers and sellers, in global financial marketplaces.” Accordingly, the Applicant respectfully submits that the description of services with respect to “enhancing liquidity” and “price discovery” complies with the requirements. Withdrawal of the refusal of the identification of services is respectfully requested. The Applicant further submits that an additional fee for a multiple-class application is not required as all the applied-for services are in Class 36. The Applicant further acknowledges that the specimen is objected to for not showing “a direct association between the mark and services in that the specimen does not explicitly reference the services specified in the identification.” The Applicant respectfully disagrees and submits that the specimen shows the mark being used in rendering the applied for services. For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698. In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. Here, the heading of the specimen recites “Broker Services.” The specimen further provides that “CalRock [is a] leading broker[] for the North American OTC natural gas market” and that “CalRock Brokers provides professional coverage of crude oil products within North American markets.” The webpage of the specimen further includes a link inviting customers to “contact us.” Accordingly, the specimen shows the mark in connection with rendering the applied for services in a manner that creates in the minds of potential consumers a direct association between the mark and the services. For example, the explicit reference to brokerage services for crude oil products provides a direct association between the specimen and the applied-for services of “Providing financial services in the nature of facilitating financial transactions for commodities and commodity derivatives …” and related financial instruments. Accordingly, the Applicant respectfully submits that the submitted specimen complies with the applicable requirements. Finally, the Applicant respectfully submits that the substitute specimen submitted herewith shows the marks as depicted in the drawing. Withdrawal of the objection to the specimen is respectfully requested. In light of the remarks above, it is respectfully submitted that the application is in condition to be published for opposition. If the Examining Attorney has any comments or questions regarding this Response, he is invited to contact the Applicant’s attorney, Richard L. Cruz, directly at 215.656.2446 or richard.cruz@dlapiper.com. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| PROVIDING FINANCIAL SERVICES IN THE NATURE OF FACILITATING FINANCIAL TRANSACTIONS BETWEEN BUYERS AND SELLERS; PROVIDING FINANCIAL SERVICES IN THE NATURE OF ENHANCING LIQUIDITY, ALSO KNOWN AS INCREASING THE DEGREE TO WHICH A FINANCIAL ASSET CAN BE QUICKLY BOUGHT OR SOLD WITHOUT AFFECTING THE FINANCIAL ASSET'S PRICE, AND PRICE DISCOVERY, ALSO KNOWN AS DETERMINING THE PRICE OF A FINANCIAL ASSET THROUGH INTERACTIONS BETWEEN BUYERS AND SELLERS, IN GLOBAL FINANCIAL MARKETPLACES; AND PROVIDING ALL OF THE FOREGOING FINANCIAL SERVICES VIA A PLATFORM THAT UTILIZES VOICE INTERACTIONS BETWEEN BUYERS AND SELLERS AND OTHER ELECTRONIC MEDIUMS TO FACILITATE THE FINANCIAL TRANSACTIONS, ENHANCED LIQUIDITY AND PRICE DISCOVERY SERVICES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/16/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/16/2019 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 036 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Providing financial services in the nature of facilitating financial transactions involving commodities and commodity derivatives, securities, stocks, bonds, equities, futures and options; enhancing liquidity, also known as increasing the degree to which a financial asset can be quickly bought or sold without affecting the financial asset's price, and price discovery, also known as determining the price of a financial asset through interactions between buyers and sellers, in global financial marketplaces; and providing the foregoing via a mobile software application and a website | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/16/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/16/2019 |
| ATTORNEY SECTION (current) | |
| NAME | Richard L. Cruz |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | DLA PIPER LLP (US) |
| STREET | 1650 MARKET STREET, SUITE 5000 |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | US |
| pto.phil@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | ICE-19-1031 |
| ATTORNEY SECTION (proposed) | |
| NAME | Richard L. Cruz |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | DLA PIPER LLP (US) |
| STREET | 1650 MARKET STREET, SUITE 5000 |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | United States |
| PHONE | 215-656-2446 |
| pto.phil@us.dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | ICE-19-1031 |
| CORRESPONDENCE SECTION (current) | |
| NAME | RICHARD L. CRUZ |
| FIRM NAME | DLA PIPER LLP (US) |
| STREET | 1650 MARKET STREET, SUITE 5000 |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | US |
| pto.phil@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | ICE-19-1031 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Richard L. Cruz |
| FIRM NAME | DLA PIPER LLP (US) |
| STREET | 1650 MARKET STREET, SUITE 5000 |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | United States |
| PHONE | 215-656-2446 |
| pto.phil@us.dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | ICE-19-1031 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /RLC/ |
| SIGNATORY'S NAME | Richard L. Cruz |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania bar member |
| SIGNATORY'S PHONE NUMBER | 215-656-2446 |
| DATE SIGNED | 12/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 11 14:36:10 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.X.XX-201 91211143610565819-8856373 5-7004bbd11bbeee6a12ecea0 ba8af68120da1fb13ccae32bc c9af29a9ea23997c5-N/A-N/A -20191211142836155447 |
| 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 Applicant acknowledges the requirement for a new drawing. The Applicant submits herewith a version of the drawing free from pixilation and blurriness. The mark itself remains unchanged.
The Applicant further acknowledges the requirement for a clarified description of the mark. The Applicant adopts the description helpfully suggested by the Examiner as follows:
The mark consists of the stylized letters “CR” formed by three parallel lines arranged to form a generally circular shape that is divided into two halves, with the right half having an angled appendage protruding in a downward-right direction appearing next to the stylized wording “CalRock”.
The Applicant acknowledges the requirement for a clarified identification of services. The Applicant adopts the following description:
International Class 036: Providing financial services in the nature of facilitating financial transactions involving commodities and commodity derivatives,
securities, stocks, bonds, equities, futures and options between buyers and sellers; enhancing liquidity, also known as increasing the
degree to which a financial asset can be quickly bought or sold without affecting the financial asset's price, and price discovery, also known as determining the price of a financial asset through
interactions between buyers and sellers, in global financial marketplaces; and providing the foregoing via a mobile software application and a website and
providing all of the foregoing financial services via a platform that utilizes voice interactions between buyers and sellers and other electronic mediums to facilitate the financial transactions,
enhanced liquidity and price discovery services
The Applicant notes that the ID Manual of Acceptable Identification of Services indicates that “financial services, namely, assisting others with the completion of financial transactions for stocks, bond, securities and equities” is acceptable. That language is similar to Applicant’s proposed amendment language. Accordingly, the Applicant respectfully submits that the amended language is sufficiently clear inasmuch as it mirrors an acceptable description of services in Class 36.
With respect to “enhancing liquidity” and “price discovery,” the Applicant notes that those terms are well-understood “terms of art” in the financial services space. As set forth in TMEP 1402.01, “[a]n identification may include terms of art in a particular field or industry that are definite and limited to a single class, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.”
The identification of services provides definitions of “enhancing liquidity” and “price discovery.” For example, the description indicates that “enhancing liquidity” is “also known as increasing the degree to which a financial asset can be quickly bought or sold without affecting the financial asset's price” and that “price discovery” is “also known as determining the price of a financial asset through interactions between buyers and sellers, in global financial marketplaces.” Accordingly, the Applicant respectfully submits that the description of services with respect to “enhancing liquidity” and “price discovery” complies with the requirements.
Withdrawal of the refusal of the identification of services is respectfully requested.
The Applicant further submits that an additional fee for a multiple-class application is not required as all the applied-for services are in Class 36.
The Applicant further acknowledges that the specimen is objected to for not showing “a direct association between the mark and services in that the specimen does not explicitly reference the services specified in the identification.” The Applicant respectfully disagrees and submits that the specimen shows the mark being used in rendering the applied for services.
For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698. In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services.
Here, the heading of the specimen recites “Broker Services.” The specimen further provides that “CalRock [is a] leading broker[] for the North American OTC natural gas market” and that “CalRock Brokers provides professional coverage of crude oil products within North American markets.” The webpage of the specimen further includes a link inviting customers to “contact us.” Accordingly, the specimen shows the mark in connection with rendering the applied for services in a manner that creates in the minds of potential consumers a direct association between the mark and the services. For example, the explicit reference to brokerage services for crude oil products provides a direct association between the specimen and the applied-for services of “Providing financial services in the nature of facilitating financial transactions for commodities and commodity derivatives …” and related financial instruments. Accordingly, the Applicant respectfully submits that the submitted specimen complies with the applicable requirements.
Finally, the Applicant respectfully submits that the substitute specimen submitted herewith shows the marks as depicted in the drawing. Withdrawal of the objection to the specimen is respectfully requested.
In light of the remarks above, it is respectfully submitted that the application is in condition to be published for opposition.
If the Examining Attorney has any comments or questions regarding this Response, he is invited to contact the Applicant’s attorney, Richard L. Cruz, directly at 215.656.2446 or richard.cruz@dlapiper.com.
