UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/395183
APPLICANT: ChoicePoint Asset Company
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CORRESPONDENT ADDRESS: KRISTIN L. BURNS PAUL, HASTINGS, JANOFSKY & WALKER LLP 600 PEACHTREE STREET N.E., SUITE 2400 ATLANTA GA 30308
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom105@uspto.gov
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MARK: CURRENT CARRIER
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/395183
This application has been reassigned to the undersigned examining attorney.
This Office Action responds to the applicant’s letter dated November 21, 2002.
The applicant’s amendment to the Supplemental register is accepted and made of record.
However, based upon the applicant’s response, the following new issue has arisen.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
The wording CARRIER in the applicant’s mark is generic for the applicant’s services because it describes the source of the services, namely, an insurance carrier. It is equivalent to a business entity designation and must be disclaimed. The applicant must insert a disclaimer of CARRIER in the application. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1208.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use CARRIER apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes. Information about revised International Class 42 and new International Classes 43, 44, and 45 is available at www.gov.uspto.report/web/offices/tac/notices/notices.htm.
All applications filed on or after January 1, 2002, must comply with the new classification schedule. For applications filed before January 1, 2002, the new classification schedule is optional. Applicants opting to amend to the new schedule must advise the assigned Examining Attorney.
Applicants may now file changes of correspondence via a new form on TEAS. Address changes may be performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving form, which is available online at: www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.
On April 30, 2002, the Trademark Operation posted an electronic Response to Office Action form on the TEAS (Trademark Electronic Application System) web site. By using this new web-based TEAS form, customers can (1) respond to an Office Action based on an application or Statement of Use; or (2) pay an additional fee after a phone call from the Office, i.e., to enable an Examiner's Amendment. Upon receipt of the electronically-submitted response, the prosecution history will automatically be updated to show "TEAS Response to Office Action received." To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/oa200>>. NOTE: This form cannot be used to respond to any actions from either the Intent-to-Use (ITU) or Post-Registration areas. Forms for that purpose will be available in the future.
On April 30, 2002, the Trademark Operation posted an electronic Preliminary Amendment form on the TEAS (Trademark Electronic Application System) web site. By using this new web-based TEAS form, customers can submit a Preliminary Amendment prior to examination. Upon receipt of the electronically-submitted preliminary amendment, the prosecution history will automatically be updated to show "TEAS Preliminary Amendment received." To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/pa200>>. NOTE: This form should ONLY be used if an already-filed application has not yet been examined by the Office.
John D. Dalier
Trademark Examining Attorney
Law Office 105
(703) 308-9105, ext. 131
Fax (703) 872-9875
ecom105@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/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 above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.