To: | USA Financial Media Corporation (trademarks@wnj.com) |
Subject: | U.S. Trademark Application Serial No. 88619206 - ADVISOR BLUE BOOK - 150613New |
Sent: | December 20, 2019 04:26:26 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88619206
Mark: ADVISOR BLUE BOOK
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Correspondence Address: |
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Applicant: USA Financial Media Corporation
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Reference/Docket No. 150613New
Correspondence Email Address: |
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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: December 20, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “ADVISOR” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a characteristic or feature of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the Oxford Dictionary shows this wording means “a person who gives advice in a particular field.” Thus, the wording merely describes applicant’s services because they are rendered by people who give advice in a particular field. Specifically, in this case, applicant’s services include providing consulting services on the subject of valuation of financial advisor businesses.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ADVISOR” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant must also respond to the requirement below.
INQUIRY ON SIGNIFICANCE OF WORDING IN MARK/NATURE OF SERVICES
(1) Explain whether the wording in the mark “BLUE BOOK” has any meaning or significance in the trade or industry in which applicant’s services are provided, any meaning or significance as applied to applicant’s services, or if such wording is a term of art within applicant’s industry.
(2) Respond to the following questions regarding the nature of the services, because the nature of such services is not clear from the present record. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
1) Does the Applicant create a book (hard copy or electronic format) of specialized information?
2) Does the Applicant (or will the Applicant in the future in connection with these services) create a book (hard copy or electronic format) that is a “register of prominent persons” in the field of advising?
3) Does the Applicant reference the term “BLUE BOOK” on any of its website pages or printed literature? If so, please send in a copy of this/these references, so the Examining Attorney can review them AND the website address (so the Examining Attorney can go directly to these website pages or related pages).
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
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.
/Cheryl Kluwe/
Cheryl Kluwe
Examining Attorney
Law Office 126
(571) 270-3839
cheryl.kluwe@uspto.gov
RESPONSE GUIDANCE