BOX RESPONSES – NO FEE
Serial No.: 76/461720
Mark:
APPASSIST
Applicant: Banner
Life Insurance Company
Trademark Law Office: 111
Examining Attorney: Zachary R. Bello
RESPONSE TO OFFICE ACTION
Applicant Banner Life Insurance Company ("Banner") responds as follows to the First Office Action regarding the application to register the above-referenced trademark:
Recitation of Services
The original application filed on October 21, 2002, included the following recitation of services:
Insurance products/services and health care services in International Class 036.
Banner hereby requests that the application be amended to delete the original recitation of services and the following substituted
in lieu thereof:
Insurance underwriting in the field of life insurance in International Class 036.
Banner submits that the above amendment renders moot the need to prosecute a combined or multi-class application.
Mark is Merely Descriptive
The First Office Action refuses the registration of Banner’s trademark because it is considered merely descriptive of Banner’s services. In particular, the examining attorney has concluded that
“APP” is an abbreviation for “application,” that “ASSIST” means “to give help of support” and therefore “APPASSIST” is merely descriptive of Banner’s “insurance products/services and health care
services.” Banner disagrees with the examining attorney’s conclusions, and states the following in support of registration of its mark.
Banner asserts that the term “APP” is not merely descriptive of Banner’s services because it does not immediately describes a quality, characteristic or feature thereof or directly convey information
regarding the nature, function, purpose or use of the goods or services. The examining attorney’s own evidence establishes that “APP” does not, without speculation or conjecture, necessarily
mean “application.” Banner submits that, as described in the “Acronym Finder” printout attached to the First Office Action, “APP” may also stand for “Approved” or possibly “Approval,”
suggesting that “APPASSIST” may in fact be used in connection with the approval of insurance underwriting. Alternatively, “APP” may have a Banner-specific meaning (for example “Advanced
Policy Programs”), the possible significance of which is unknown to the average user of the services, even when viewed in relation to the goods or services for which registration is sought. See In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Consequently, the meaning of “APP” in relation to “insurance services” requires the exercise of mental processing in order to readily perceive the descriptive significance of such term as it relates
to insurance underwriting services. Such mental processing on the part of the average user of the services means that “APP” is not descriptive.
Banner further asserts that the term “ASSIST” is not descriptive as it relates to insurance services. The Patent and Trademark Office (“PTO”) has repeatedly found that “ASSIST” is not
descriptive in such context. In numerous registrations for marks which include the term “ASSIST” the PTO has never required a disclaimer of “ASSIST” as descriptive. See Reg. No. 2,741,986
for “TRANSPLANT ASSIST”, Reg. No. 2.644,678 for “PROTECTASSIST”, Reg. No. 2,645,255 for “PAY-ASSIST”, Reg. No. 2,690,445 for “CLAIMASSIST”, Reg. No. 2,548,476 for “LIFEASSIST”, and Reg. No. 2,312,375
for “GUESTASSIST”, among others.
If, as the examining attorney believes, “ASSIST” were descriptive with respect to insurance services (i.e., the services for which registration is sought (In re Bright-Crest, Ltd., supra)) the PTO
would have required that it be disclaimed as descriptive. In none of the cited references, however, is “ASSIST” disclaimed. Therefore, Banner submits, the PTO has long recognized that
“ASSIST” is not descriptive with respect to “insurance services.”
With respect to the combined term “APPASSIST” Banner submits when applied to "insurance services" the term "APPASSIST” cannot be descriptive because, as shown above, the meanings of the components
comprising the term "APPASSIST" are not descriptive individually. Therefore, when considered together, the meaning of the combined term requires the exercise of mental processing in order to
readily perceive the significance of such term as it relates to insurance services. Thus, Banner, submits, “APPASSIST” is not descriptive.
A compound word mark is comprised of two or more distinct words or words and syllables which are represented as one word." TMEP Section 1213.04. A compound word mark does not require
disclaimers of any element, whether descriptive, generic or otherwise. TMEP Section 1213.04. Pursuant to the TMEP, Applicant's mark, APPASSIST, is a compound word mark that can not be
deemed descriptive under Section 2(e)(1) of the Trademark Act.
Even assuming, arguendo, that one or both of the terms “APP” and/or “ASSIST” was descriptive, the combined term “APPASSIST” is not a
fortiori descriptive. A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning,
or if the composite has an incongruous meaning as applied to the goods. See TMEP Section 1209.03(d), citing In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) and In re
Shutts, 217 USPQ 363 (TTAB 1983).
Banner submits that “APPASSIST” creates a unitary mark having a unique meaning with respect to the “insurance services” for which
registration is sought. “APPASSIST” is unique for the reasons set forth above, specifically because “APPASSIST” has no plain meaning and requires the exercise of mental processing in order to
readily perceive the descriptive significance of such term as it relates to insurance underwriting services. Such mental processing on the part of the average user of the services means that
“APPASSIST” is not descriptive.
Based on the foregoing, Applicant requests that the instant application be passed on for publication in the Official Gazette.
Any further questions concerning this application may be directed to Karl Wm. Means, Esquire, Eric J. von Vorys, Esquire or Stephen
G. Janoski, Esquire, each a member of the District of Columbia bar, of the law firm Shulman, Rogers, Gandal, Pordy & Ecker, PA, at the address below.
Counsel for Banner Life Insurance Company, Inc.
Signed:
/karl w means/
Karl Wm. Means
Shulman Rogers Gandal Pordy & Ecker, P.A.
11921 Rockville Pike, 3rd Floor
Rockville, Maryland 20852
kmeans@srgpe.com
Direct Dial: (301) 230-6573
Fax: (301) 230-2891
Date: September 15, 2003
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
/karl w means/
Karl Wm. Means
Date: September 15, 2003
G:\72\Responses to Office Actions\76461720 AppAssist Response OA1 (005297.00029).doc
