wells real estate funds(r) wells fargo real estate inc, wells reit iii, inc., wells timerbland reit...

7/30/2019 Wells Real Estate Funds(R) Wells Fargo Real Estate Inc, Wells REIT III, Inc., Wells Timerbland REIT Inc, Wells Limite

1/29

Side - 1

NOTICE OF ACCEPTANCE AND ACKNOWLEDGEMENT OF 8 & 15DECLARATIONMAILING DATE: Apr 21, 2010

The combined declaration of use and incontestability filed in connection with the registration identified

below meets the requirements of Sections 8 and 15 of the Trademark Act, 15 U.S.C. 1058 and 1065. Thecombined declaration is accepted and acknowledged. The registration remains in force.

For further information about this notice, visit our website at: http://www.uspto.gov. To review information

regarding the referenced registration, go to http://tarr.uspto.gov.

REG NUMBER: 2881587

MARK: WELLS REAL ESTATE FUNDS

OWNER: Wells Real Estate Funds, Inc.

Side - 2

UNITED STATES PATENT AND TRADEMARK OFFICECOMMISSIONER FOR TRADEMARKSP.O. BOX 1451ALEXANDRIA, VA 22313-1451

FIRST-CLASSMAIL

U.S POSTAGE

PAID

Donald S. Showalter

GrayRobinson, P.A.

401 East Las Olas Blvd.Suite 1850

FORT LAUDERDALE, FL 33301


2/29

PTO Form 1583 (Rev 5/2006)

OMB No. 0651-0055 (Exp 12/31/2011)

Combined Declaration of Use and Incontestability under Sections

8 & 15

The table below presents the data as entered.

Input Field Entered

REGISTRATION NUMBER 2881587

REGISTRATION DATE 09/07/2004

SERIAL NUMBER 78260619

MARK SECTION

MARK WELLS REAL ESTATE FUNDS

OWNER SECTION (current)

NAME Wells Real Estate Funds, Inc.

STREET Suite 250

CITY Atlanta

STATE Georgia

ZIP/POSTAL CODE

30092COUNTRY United States

OWNER SECTION (proposed)


INTERNAL ADDRESS Suite 250

STREET 6200 The Corners Parkway

CITY Norcross

STATE Georgia

ZIP/POSTAL CODE 30092

COUNTRY United States

ATTORNEY SECTION (current)

NAME Donald S. Showalter

FIRM NAME HOLLAND & KNIGHT LLP


3/29

INTERNAL ADDRESS ONE EAST BROWARD BOULEVARD

STREET SUITE 1300

CITY FORT LAUDERDALE

STATE Florida

POSTAL CODE 33301


PHONE (954) 468-7879

FAX (954) 463-2030

EMAIL [email protected]

ATTORNEY SECTION (proposed)


FIRM NAME GrayRobinson, P.A.


STREET 401 East Las Olas Blvd.

CITY FORT LAUDERDALE

STATE Florida

POSTAL CODE 33301


PHONE 954-761-7473

FAX 954-761-8112


ATTORNEY DOCKET NUMBER 818760.3

OTHER APPOINTED ATTORNEY Thomas L. Kautz

GOODS AND/OR SERVICES SECTION

INTERNATIONAL CLASS 036

GOODS OR SERVICES KEEP ALL LISTED

SPECIMEN FILE NAME(S)\\TICRS\EXPORT10\IMAGEOUT

10\782\606\78260619\xml2\ 8150002.JPG

SPECIMEN DESCRIPTIONDigital image of a website screenshot showing the

mark used in advertising for the services

PAYMENT SECTION
http://localhost/var/www/apps/conversion/tmp/8150002.JPGhttp://localhost/var/www/apps/conversion/tmp/8150002.JPG


4/29

NUMBER OF CLASSES 1

NUMBER OF CLASSES PAID 1

SUBTOTAL AMOUNT 300

TOTAL FEE PAID 300

SIGNATURE SECTION

SIGNATURE /Michael D. Dobbs/

SIGNATORY'S NAME Michael D. Dobbs

SIGNATORY'S POSITION Vice President

DATE SIGNED 04/07/2010

PAYMENT METHOD DA

FILING INFORMATION

SUBMIT DATE Thu Apr 08 09:25:23 EDT 2010

TEAS STAMP

USPTO/S08N15-66.192.99.11

7-20100408092523875937-28

81587-460585e7cba9a1c426e

d21d1d5c8b11ecb7-DA-6780-

20100407155315137048


5/29

PTO Form 1583 (Rev 5/2006)

OMB No. 0651-0055 (Exp 12/31/2011)

Combined Declaration of Use and Incontestability under Sections 8 & 15

To the Commissioner for Trademarks:

REGISTRATION NUMBER:2881587REGISTRATION DATE:09/07/2004


The owner, Wells Real Estate Funds, Inc., having an address ofSuite 250

6200 The Corners ParkwayNorcross, Georgia 30092

United States

is filing a Combined Declaration of Use and Incontestability under Sections 8 & 15.

For International Class 036, the mark is in use in commerce on or in connection with all of the goods orservices listed in the existing registration for this specific class; and the mark has been continuously used

in commerce for five (5) consecutive years after the date of registration, or the date of publication underSection 12(c), and is still in use in commerce on or in connection with all goods or services listed in theexisting registration for this class. Also, no final decision adverse to the owner's claim of ownership of

such mark for those goods or services exists, or to the owner's right to register the same or to keep thesame on the register; and, no proceeding involving said rights pending and not disposed of in either the

U.S. Patent and Trademark Office or the courts exists.

The owner is submitting one specimen for this class showing the mark as used in commerce on or inconnection with any item in this class, consisting of a(n) Digital image of a website screenshot showingthe mark used in advertising for the services.

Specimen File1

The registrant hereby appoints Donald S. Showalter and Thomas L. Kautz of GrayRobinson, P.A.Suite 1850

401 East Las Olas Blvd.FORT LAUDERDALE, Florida 33301

United Statesto file this Combined Declaration of Use and Incontestability under Sections 8 & 15 on behalf of the

registrant. The attorney docket/reference number is 818760.3.

A fee payment in the amount of $300 will be submitted with the form, representing payment for 1

class(es), plus any additional grace period fee, if necessary.

Declaration

The mark is in use in commerce on or in connection with the goods and/or services identified above, as
http://localhost/var/www/apps/conversion/tmp/8150002.JPG


6/29

evidenced by the attached specimen(s) showing the mark as used in commerce. The mark has been in

continuous use in commerce for five (5) consecutive years after the date of registration, or the date of

publication under Section 12(c), and is still in use in commerce. There has been no final decision adverse

to the owner's claim of ownership of such mark, or to the owner's right to register the same or to keep the

same on the register; and there is no proceeding involving said rights pending and not disposed of either

in the U.S. Patent and Trademark Office or in the courts.

The undersigned being hereby warned that willful false statements and the like are punishable by fine orimprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like

may jeopardize the validity of this document, declares that he/she is properly authorized to execute this

document on behalf of the Owner; and all statements made of his/her own knowledge are true and that all

statements made on information and belief are believed to be true.

Signature: /Michael D. Dobbs/Date: 04/07/2010

Signatory's Name: Michael D. Dobbs

Signatory's Position: Vice President

Mailing Address (current):HOLLAND & KNIGHT LLP

SUITE 1300

FORT LAUDERDALE, Florida 33301

Mailing Address (proposed):

GrayRobinson, P.A.

401 East Las Olas Blvd.

FORT LAUDERDALE, Florida 33301

Serial Number: 78260619

Internet Transmission Date: Thu Apr 08 09:25:23 EDT 2010TEAS Stamp: USPTO/S08N15-66.192.99.117-2010040809252

3875937-2881587-460585e7cba9a1c426ed21d1

d5c8b11ecb7-DA-6780-20100407155315137048


7/29


8/29


9/29


10/29


11/29

Commissioner for Trademarks2900 Crystal Drive

Arlington , VA 22202-3514www.uspto.gov

May 26, 2004NOTICE OF PUBLICATION UNDER 12(a)

1. Serial No.:78/260,619

2. Mark:WELLS REAL ESTATE FUNDS

3. International Class(es):36

4. Publication Date:Jun 15, 2004

5. Applicant:Wells Real Estate Funds, Inc.

The mark of the application identified appears to be entitled to registration. The mark will, in accordance with Section 12(a) ofthe Trademark Act of 1946, as amended, be published in the Official Gazette on the date indicated above for the purpose ofopposition by any person who believes he will be damaged by the registration of the mark. If no opposition is filed within the timespecified by Section 13(a) of the Statute or by rules 2.101 or 2.102 of the Trademark Rules, the Commissioner of Patents andTrademarks may issue a certificate of registration.

Copies of the trademark portion of the Official Gazette containing the publication of the mark may be obtained from:

The Superintendent of DocumentsU.S. Government Printing OfficePO Box 371954Pittsburgh, PA 15250-7954

Phone: (202) 512-1800

By direction of the Commissioner.

Correspondence Address:

Donald S. ShowalterHolland & Knight LLPSuite 1300One East Broward BoulevardFort Lauderdale, FL 33301

TMP&I


12/29

PTO Form 1966 (Rev 9/2002)

OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


Input Field Entered

SERIAL NUMBER 78260619

MARK SECTION (no change)

ARGUMENT(S)

The refusal under Section 2(e)(4) is noted. In response, amendment of the application to one

seeking registration under Section 2(f) is made below. The required disclaimer is also

submitted below.

ADDITIONAL STATEMENTS SECTION

DISCLAIMERNo claim is made to the exclusive right to use REAL

ESTATE FUNDS apart from the mark as shown.

SECTION 2(f)

The mark has become distinctive of the goods/services

through the applicant's substantially exclusive and

continuous use in commerce for at least the five years

immediately before the date of this statement.

SIGNATURE SECTION

SIGNATURE /brandon unterreiner/

SIGNATORY NAME Brandon L. Unterreiner

SIGNATORY POSITION Vice President

SIGNATORY DATE 02/20/2004

SIGNATURE /brandon unterreiner/

SIGNATORY NAME Brandon L Unterreiner

SIGNATORY POSITION

Vice PresidentSIGNATORY DATE 02/20/2004

FILING INFORMATION SECTION

SUBMIT DATE Fri Feb 20 15:29:22 EST 2004

TEAS STAMP

USPTO/OA-65115139210-2004

0220152922865090-78260619

-2001f7048723abc17ce96975


13/29

596f610795b-N-N-200402201

04859013117

PTO Form 1966 (Rev 9/2002)OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


Application serial no. 78260619 is amended as follows:

Argument(s)

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

The refusal under Section 2(e)(4) is noted. In response, amendment of the application to one seekingregistration under Section 2(f) is made below. The required disclaimer is also submitted below.

Additional Statements

No claim is made to the exclusive right to use REAL ESTATE FUNDS apart from the mark as shown.

The mark has become distinctive of the goods/services through the applicant's substantially exclusive

and continuous use in commerce for at least the five years immediately before the date of this

statement.

Declaration Signature

The undersigned, being hereby warned that willful false statements and the like so made are punishable

by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statementsmay jeopardize the validity of the application or any resulting registration, declares that he/she is

properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the

applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in

use in commerce, and was in use in commerce on the application filing date, on or in connection with

the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C.

Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in

commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the

application filing date, to use the mark in commerce on or in connection with the goods and/or services

listed in the application; to the best of his/her knowledge and belief no other person, firm, corporation,

or association has the right to use the mark in commerce, either in the identical form thereof or in such

near resemblance thereto as to be likely, when used on or in connection with the goods and/or servicesof such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements

made of his/her own knowledge are true; and that all statements made on information and belief are

believed to be true as set forth within the original application and/or the submitted

amendment/response.

Signature: /brandon unterreiner/Date: 02/20/2004

Signatory's Name: Brandon L. Unterreiner



14/29

Response Signature

Signature: /brandon unterreiner/Date: 02/20/2004

Signatory's Name: Brandon L Unterreiner



Internet Transmission Date: Fri Feb 20 15:29:22 EST 2004

TEAS Stamp: USPTO/OA-65115139210-2004022015292286509

0-78260619-2001f7048723abc17ce96975596f6

10795b-N-N-20040220104859013117


15/29

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/260619

APPLICANT: Wells Real Estate Funds, Inc.

CORRESPONDENT ADDRESS: Donald S. Showalter

Holland & Knight LLP

Suite 1300

One East Broward Boulevard

Fort Lauderdale, FL 33301

RETURN ADDRESS:Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

[email protected]


CORRESPONDENTS REFERENCE/DOCKET NO : 430713.00040

CORRESPONDENT EMAIL ADDRESS:

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-

mail address.

OFFICE ACTION

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE

ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.

Serial Number 78/260619

The examining attorney refuses registration on the Principal Register because the mark is primarily merelysurname. Trademark Act Section 2(e)(4), 15 U.S.C. 1052(e)(4); TMEP 1211. The examining attornmust consider the primary significance of the mark to the purchasing public to determine whether a termprimarily merely a surname. In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 42(C.C.P.A. 1975). Please see the attached evidence from telephone surname disc,showing over 83,00listings, establishing the surname significance of the mark. TMEP 1211 et seq.

A surname combined with incapable matter, such as a generic term, is still primarily merely a surname undTrademark Act Section 2(e)(4), 15 U.S.C. 1052(e)(4). See In re Hamilton Pharmaceuticals Lt

27USPQ2d 1939 (TTAB 1993); In re Cazes, 21 USPQ2d 1796 (TTAB 1991); In re Possis Medical, In230 USPQ 72 (TTAB 1986);In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975). TMEP 1211.01(b)(vi)

The addition of the generic term REAL ESTATE FUNDS for services involving real estate fund

management does not alter the primary surname significance of the term.

It is noted that the applicant has applied based on Use in commerce for a significant time. An alternative

method of registration is suggested below:

The a lication indicates use of the mark for a si nificant time. Therefore, the a licant ma amend to


16/29

seek registration under Trademark Act Section 2(f), 15 U.S.C. 1052(f), based on acquired distinctiveness.

If the applicant chooses to do so by using the statutory suggestion of five years of use as proof of

distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate.

The mark has become distinctive of the goods/services through the applicants substantially

exclusive and continuous use in commerce for at least the five years immediately before the date

of this statement.

The applicant must provide this statement supported by an affidavit or a declaration under 37 C.F.R.

2.20. 37 C.F.R. 2.41(b); TMEP 1212.05(d).

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the

following informality.

The applicant must disclaim the descriptive wording REAL ESTATE FUNDS apart from the mark as

shown. Trademark Act Section 6, 15 U.S.C. 1056; TMEP 1213 and 1213.03(a). The wording is

merely descriptive because it is the generic name of theservices offered by the applicant.

The applicant must insert the required disclaimer even if registration of the mark is sought on theSupplemental Register or on the Principal Register under Section 2(f), because the term is a generic

identifier of the services. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative

Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyns Candies, Inc., 206 USPQ

356 (TTAB 1980); TMEP 1213.03(b).

The examining attorney has searched the Office records and has found no similar registered or pending

mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d). TMEP

704.02.

/Henry S. Zak/

Examining Attorney

Law Office 108

(703)308-9108 x 149

How to respond to this Office Action:To respond formally using the Offices Trademark Electronic Application System (TEAS), visit

http://www.uspto.gov/teas/index.html and follow the instructions.

To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and

follow the instructions.

To respond formally via regular mail, your response should be sent to the mailing Return Address listed
http://www.uspto.gov/web/trademarks/tmelecresp.htmhttp://www.uspto.gov/teas/index.html


17/29

above and include the serial number, law office and examining attorneys name on the upper right corner

of each page of your response.

To check the status of your application at any time, visit the Offices Trademark Applications and

Registrations Retrieval (TARR) system at http://tarr.uspto.gov/

For general and other useful information about trademarks, you are encouraged to visit the Offices web

site at http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE

ASSIGNED EXAMINING ATTORNEY.
http://www.uspto.gov/main/trademarks.htmhttp://tarr.uspto.gov/


18/29


19/29


20/29

PTO Form 1478 (Rev 4/2000)

OMB Control #0651-0009 (Exp. 08/31/2004)

Trademark/Service Mark Application, Principal Register, with

Declaration


Filing Date: 06/10/2003


Input Field Entered

MARK WELLS REAL ESTATE FUNDS

OWNER



STREET 6200 The Corners Parkway

CITY Atlanta

STATE GA


COUNTRYUSA

LEGAL ENTITY

TYPE CORPORATION

STATE/COUNTRY OF

INCORPORATIONGeorgia

ATTORNEY


FIRM NAME Holland & Knight LLP


STREET One East Broward Boulevard

CITY Fort Lauderdale

STATE FL


COUNTRY USA


21/29

PHONE (954) 468-7879

FAX (954) 463-2030


ATTORNEY DOCKET

NUMBER430713.00040

OTHER APPOINTED

ATTORNEY(S)Thomas L. Kautz

CORRESPONDENCE


FIRM NAME Holland & Knight LLP


STREET One East Broward Boulevard

CITY Fort Lauderdale

STATE FL


COUNTRY USA

PHONE (954) 468-7879

FAX (954) 463-2030


GOODS AND/OR

SERVICES

INTERNATIONAL CLASS 036

DESCRIPTION TEXT

Management of real estate based investments such as real estate limited

partnershps, real estate investment trusts (REITs) and mutual funds; real

estate management services.

FILING BASIS Section 1(a)

FIRST USE ANYWHERE

DATE 09/06/1984

FIRST USE IN

COMMERCE DATE09/06/1984

SPECIMENFILE NAME(S) \\ticrs\EXPORT5\IMAGEOUT5\782\606\78260619\xml1\APP0002.JPG

SPECIMENDESCRIPTIONdigital image of brochure bearing the mark as used in advertising for the

services

SIGNATURE
http://localhost/var/www/apps/conversion/tmp/APP0002.JPG


22/29

INFORMATION

SIGNATURE /Brandon L. Unterreiner/

SIGNATURE DATE 06/09/2003

SIGNATORY NAME Brandon L. Unterreiner

SIGNATORY POSITION Vice President

PAYMENT

NUMBER OF CLASSES 1

NUMBER OF CLASSES

PAID1

SUBTOTAL AMOUNT 335

TOTAL AMOUNT 335

RAM SALE NUMBER 337

RAM ACCOUNTING

DATE06/11/2003

FILING INFORMATION

SUBMIT DATE Tue Jun 10 17:16:13 EDT 2003

TEAS STAMP

USPTO/BAS-6512718311

4-200306101716131703

74-78260619-200caf88

cc44d69f8498af56f05b

269bd-DA-337-2003060

9154107303002


23/29

PTO Form 1478 (Rev 4/2000)

OMB Control #0651-0009 (Exp. 08/31/2004)

Trademark/Service Mark Application, Principal Register, with

DeclarationSerial Number: 78260619

Filing Date: 06/10/2003



The applicant, Wells Real Estate Funds, Inc., a corporation of Georgia, residing at Suite 250, 6200 TheCorners Parkway, Atlanta, GA USA 30092, requests registration of the trademark/service mark shown onthe drawing page in the United States Patent and Trademark Office on the Principal Register established

by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended.

The applicant, or the applicant's related company or licensee, is using the mark in commerce, and listsbelow the dates of use by the applicant, or the applicant's related company, licensee, or predecessor ininterest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C. ? 1051(a), as

amended.

International Class 036: Management of real estate based investments such as real estate limitedpartnershps, real estate investment trusts (REITs) and mutual funds; real estate management services.

In International Class 036: the mark was first used at least as early as 09/06/1984, and first used in

commerce at least as early as 09/06/1984, and is now in use in such commerce. The applicant issubmitting or will submit one specimen for each class showing the mark as used in commerce on or inconnection with any item in the class of listed goods and/or services, consisting of a(n) digital image of

brochure bearing the mark as used in advertising for the services. Specimen - 1

The applicant, hereby appoints Donald S. Showalter and Thomas L. Kautz of Holland & Knight LLP,Suite 1300 , One East Broward Boulevard, Fort Lauderdale, FL USA 33301 to submit this application onbehalf of the applicant.

A fee payment in the amount of $335 will be submitted with the application, representing payment for 1class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable byfine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and

the like, may jeopardize the validity of the application or any resulting registration, declares that he/she isro erl authorized to execute this a lication on behalf of the a licant; he/she believes the a licant to
http://localhost/var/www/apps/conversion/tmp/APP0002.JPG


24/29

be the owner of the trademark/service mark sought to be registered, or, if the application is being filed

under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;

to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right

to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to

be likely, when used on or in connection with the goods/services of such other person, to cause confusion,

or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and

that all statements made on information and belief are believed to be true.

Signature: /Brandon L. Unterreiner/Date: 06/09/2003

Signatory's Name: Brandon L. Unterreiner


Mailing Address:

Donald S. Showalter

Suite 1300

One East Broward Boulevard

Fort Lauderdale, FL 33301

RAM Sale Number: 337

RAM Accounting Date: 06/11/2003


Internet Transmission Date: Tue Jun 10 17:16:13 EDT 2003

TEAS Stamp: USPTO/BAS-65127183114-20030610171613170374-78260619-

200caf88cc44d69f8498af56f05b269bd-DA-337-20030609154107303002


25/29


26/29


27/29


28/29


29/29