To: | First Western Bank & Trust (ipgmw@lawmoss.com) |
Subject: | U.S. Trademark Application Serial No. 88827092 - FIRST WESTERN EQUIPMENT FINANCE - 51292.3 |
Sent: | June 04, 2020 01:06:57 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88827092
Mark: FIRST WESTERN EQUIPMENT FINANCE
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Correspondence Address: |
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Applicant: First Western Bank & Trust
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Reference/Docket No. 51292.3
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: June 04, 2020
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 USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Although no conflicting marks that would bar registration under Trademark Act Section 2(d) have been found, applicant must respond to the requirements set forth below.
IDENTIFICATION OF SERVICES REQUIREMENT
The wording “Leasing of industrial and commercial equipment, vehicles, and machinery” in the identification of services must be clarified because it is too broad and could include services in other international classes. See TMEP §§1402.01, 1402.03.
Leasing services are in principle classified in the same classes as the services provided by means of the leased objects, e.g., leasing of construction equipment is in Class 37, leasing of telephones is in Class 38, and leasing of motor vehicles are in Class 39. However, hire or lease-purchase financing services are classified in Class 36 as a financial service.
Applicant may substitute the following wording, if accurate:
Class 36 is definite
Class 37: Leasing of construction equipment; Leasing of agricultural equipment
Class 38: Leasing of telecommunication equipment
Class 39: Leasing of motor vehicles
Class44: Leasing of agricultural equipment
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
INSUFFICIENT FEE
The application identifies services that may be classified in at least five classes; however, applicant submitted fees sufficient for only two classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
MULTIPLE-CLASS REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies services that may be classified in at least five classes; however, applicant submitted fees sufficient for only two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
DISCLAIMER REQUIREMENT
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The attached evidence from http://www.ahdictionary.com/word/search.html?q=first shows this wording means “[r]anking above all others, as in importance or quality.” Therefore, this wording is merely laudatory of the supposed superior quality of the services.
The attached evidence from http://www.valuepenguin.com/small-business/equipment-financing shows this wording means “a loan used to purchase business-related equipment, such as a restaurant oven, a vehicle or a copier scanner.” Given that the identified services include “[l]easing of industrial and commercial equipment, vehicles, and machinery,” the wording merely describes a characteristic, function, feature, purpose, or use of applicant’s 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 “FIRST” and “EQUIPMENT FINANCE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Donald O. Johnson/
Examining Attorney
Law Office 104
571-272-7831
don.johnson@uspto.gov
RESPONSE GUIDANCE