Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88582128 HB (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8858212 8/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Office has refused registration of the present mark under Section 2(d) arguing there is a likelihood of confusion with U.S. Registration No. 5014241. The applicant submits that the present application should be allowed registration. At the time of filing the present application, the applicant claimed the following prior Registration Nos.: 3716559, 3716560, 3716561, and 3732411. Registration No. 3716559 is for the word mark HOMRICH BERG Registration No. 3716560 is for the word mark HOMRICH BERG WEALTH MANAGEMENT Registration No. 3716561 is for the design mark HB HOMRICH BERG WEALTH MANAGEMENT Registration No. 3732411 is for the design mark HB HOMRICH BERG WEALTH MANAGEMENT The present mark is essentially identical to the mark in the prior registration owned by the applicant of 3732411 with the exception that the present application is only including the stylized design of the HB logo. The services listed in the present application are identical to the services listed in Registration Nos.: 3716559, 3716560, 3716561, and 3732411 with the exception that the service of ?Financial trust operations? was omitted in the present application. Each of the Registration Nos.: 3716559, 3716560, 3716561, and 3732411 are owned by the present applicant, were all filed well before the cited registration 5014241, have all been used by the present applicant for over 10 years and all have a Section 15 status of being incontestable. It is well established in TMEP 1207.01 Likelihood of Confusion, that In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), where there is similarity in the marks and a relatedness of the foods/services. Here, the Board stated that ?under usual circumstances? it would conclude that confusion is likely to occur; however, an ?unusual situation? compelled the Board ?to balance the similarities between the marks and goods against the facts that applicant already owns a registration for a substantially similar mark for the identical goods?? Further, in Strategic Partners, the Board noted that when the applicant?s prior registration has achieved incontestable status, that this further strengthens the applicant?s position. Basing its decision on the thirteenth du Pont factor, which "relates to ?any other established fact probative of the effect of use,?" the Board determined that this factor outweighed the others and confusion was unlikely. Id. at 1399-1400 (quoting du Pont, 476 F.2d at 1361, 177 USPQ at 567). In the present case, the applicant?s mark is essentially identical to the prior registrations, the description of services is essentially identical and the prior registrations are all incontestable. Based on these facts, the applicant asserts that in the present case, the Office should allow the present mark to move forward to registration based on the Offices stated criteria in TMEP 1207.01: (1) The applicant?s prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) The identifications of services in the application and the applicant?s prior registrations are identical or identical in relevant part. And (3) the length of time the applicant?s prior mark has co-existed with the registration being considered as the basis for the section 2(d) refusal. The applicant thus requests the Office reconsideration of the refusal to register the applicant?s mark. The Office has also presented an advisory that prior-pending application may also present a bar to registration. The Office has cited pending US Application Serial Nos. 88580134 and 88227885. With regards to Application Serial No. 88580134, this registration focuses on real estate services and should not be cited against the present application for all of the above-listed reasons and further, the fact that the services are not related. With regards to Application Serial No. 88227885, this registration focuses on banking services and should not be cited against the present application for all of the above-listed reasons and further, the fact that the services are not related. As such, the applicant respectfully requests the Office to allow this mark to move towards registration.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Homrich & Berg, Inc., a corporation of Georgia, having an address of
      3550 Lenox Road NE, Suite 2700
      Atlanta, Georgia 30326
      United States

Proposed: Homrich & Berg, Inc., a corporation of Georgia, having an address of
      3550 Lenox Road NE, Suite 2700
      Atlanta, Georgia 30326
      United States
      Email Address: XXXX
Correspondence Information (current):
      GREGORY SCOTT SMITH
      PRIMARY EMAIL FOR CORRESPONDENCE: gsmith@srtslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@srtslaw.com

The docket/reference number is 08019.8070.
Correspondence Information (proposed):
      Gregory Scott Smith
      PRIMARY EMAIL FOR CORRESPONDENCE: gsmith@srtslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@srtslaw.com

The docket/reference number is 08019.8070.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Gregory Scott Smith/     Date: 03/12/2020
Signatory's Name: Gregory Scott Smith
Signatory's Position: Attorney of record, Georgia bar member

Signatory's Phone Number: (404) 643-3430

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    GREGORY SCOTT SMITH
   SMITH TEMPEL BLAHA LLC
   SUITE 340
   50 GLENLAKE PARKWAY
   ATLANTA, Georgia 30328
Mailing Address:    Gregory Scott Smith
   SMITH TEMPEL BLAHA LLC
   SUITE 340
   50 GLENLAKE PARKWAY
   ATLANTA, Georgia 30328
        
Serial Number: 88582128
Internet Transmission Date: Thu Mar 12 01:05:19 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200312010519974
008-88582128-71079bc1d7960d986afe4c746a2
3ce47a8be8141b128466c93b4d32b52b5dadd74d
-N/A-N/A-20200312010147254588