To: | BlackRock, Inc. (trademarks@daypitney.com) |
Subject: | U.S. Trademark Application Serial No. 88722550 - 1 BENCHMARK TRANSLATE OBJECTIVES TO - 704772011400 |
Sent: | March 13, 2020 07:35:13 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88722550
Mark: 1 BENCHMARK TRANSLATE OBJECTIVES TO
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Correspondence Address:
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Applicant: BlackRock, Inc.
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Reference/Docket No. 704772011400
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: March 13, 2020
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.
Summary of Issues That Applicant Must Address
No Conflicting Marks Found
Failure to Function
A process or system is only a way of doing something, and is not generally a service. TMEP §1301.02(e). An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark. In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984).
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the services. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
In this case, the proposed mark is merely an illustration of the analytical steps typical in the course of financial analysis and would not be viewed as a mark in context of the applicant’s financial services. All of the wording is descriptive in connection with financial services. Benchmark, budget, invest, and monitor are terms used in the industry in connection with the applicant’s identified services. The wording under each term merely elaborates on the particular concept. The attached from applicant’s website shows the common use of these terms, particularly in Modules 2 and 3 discussing the four steps of portfolio construction. The background design/colors are merely shaded background carriers that do not make a separate impression apart from the wording. Thus, consumers will view the illustration merely as outlining the steps of the financial analysis rather than a mark that is associated as the source (e.g., brand) of these financial services.
Request for Information
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
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. Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB 2004).
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Andrea Butler/
Trademark Attorney
Law Office 124
571-272-7491
andrea.butler@uspto.gov
RESPONSE GUIDANCE