Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  November 26, 2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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

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).

 

SUMMARY OF ISSUES:

• Identification of Services Requirements
• Disclaimer Required

 

IDENTIFICATION OF SERVICES REQUIREMENTS

 

An identification of services must be specific, definite, clear, accurate, and concise. TMEP §1402.01. The identification must specify the particular services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2)  and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To "specify" means to name in an explicit manner.

 

Applicant must clarify the following terms:

 

• The term “lending services” is indefinite because it does not make clear the type of lending services, which are categorized based on consumer or commercial lending. Applicant must clarify whether applicant provides “commercial lending services” or “consumer lending services”.

 

• The term “financial depository services” is indefinite because it does not make it clear what the services are. Applicant should provide specifics about how financial deposits are accepted, for example, “electronic remote check deposit services”.

 

 

• The term “credit card services” is indefinite and too broad because credit card services include numerous services that need to be specified. Applicant should specify the specific credit card services offered, for example, “credit card authorization services”, “credit card payment services”, “credit card transaction processing services”.

 

• The term “commercial real estate” is indefinite because it does not make clear whether applicant is providing agency services or management and brokerage services. Applicant should clarify the type of commercial real estate services they provide. 

 

 

• The term “consumer mortgages” is indefinite because it does not make clear the types of services applicant provides for mortgages. Applicant should specify the types of mortgage services they offer, for example, “mortgage lending”, “mortgage brokerage”, or “mortgage foreclosure services”.

 

• The terms “wealthy and fiduciary services” is indefinite because it is unclear what services are being provided. Applicant should be specific about the services offered for wealth management, and fiduciary needs.

 

 

Applicant may substitute the following wording, if accurate:  “banking services; financial services, namely, personal, small business and commercial banking; lending services, namely, commercial lending services, consumer lending services; financial depository services, namely, electronic remote check deposit services; Credit card services, namely, credit card authorization services, credit card payment services, credit card transaction processing services; Commercial real estate agency services; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; consumer mortgage lending; consumer mortgage brokerage; consumer mortgage foreclosure services; Financial services, namely, wealth management services; fiduciary services, namely, fiduciary representative services

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

LINK TO ID MANUAL: 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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

                                                     

Applicant must disclaim the wording “NEVADA STATE BANK” because it is not inherently distinctive.  These unregistrable term is at best primarily geographically descriptive of the origin of applicant’s services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached encyclopedia evidence shows that NEVADA is a generally known geographic place or location, in particular a “state”.  See TMEP §§1210.02 et seq.  The services for which applicant seeks registration originate in this geographic place or location as shown by the screenshot from applicant’s website.  See TMEP §1210.03.  Because the services originate in this place or location, a public association of the services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.  As “Nevada” is a state, it follows then that the term “STATE” must also be disclaimed.

 

Additionally, based on applicant’s identification, applicant provides banking services and thus the term “BANK” merely describes applicant as a place that provides banking services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “NEVADA STATE BANK” 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.

 

RESPONDING TO THIS OFFICE ACTION

 

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.

 

 

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Flebbe, Kevin/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571)-272-2423

kevin.flebbe@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 26, 2019 for

U.S. Trademark Application Serial No. 88630696

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Flebbe, Kevin/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571)-272-2423

kevin.flebbe@uspto.g

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 26, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”