UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/470131

 

The following issues were discussed in communication with Jill Anderfuren on April 20^th, 2003.

 

Recitation of Services

 

The applicant has applied for the mark “PAT” for the following:

 

“Providing access to a database and software for accessing information regarding life insurance underwriting, policies, quotes and forms” in International Class 36.

 

 

The recitation of services is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the services or their nature.  TMEP section 804.  The examining attorney additionally notes that the application identifies services that may be classified in several international classes.  The applicant has currently paid for one international class.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

The listed “providing access to a database and software for accessing information regarding life insurance underwriting, policies, quotes and forms” is ambiguous in nature and requires greater specificity regarding the exact nature of the services rendered, which will then determine the appropriate international class placement for the services.  If the applicant is “providing access to a database,” then this may entail telecommunications services in International Class 38.  If the applicant is providing information in the field of life insurance via the global computer network, then the services are properly placed in International Class 36.[1]  The listed “providing access to software” may entail non-downloadable software services in International Class 42.  If the applicant is providing temporary use of on-line non-downloadable software, then the exact functionality (i.e. use as a spreadsheet) and subject matter (in this instance, life insurance policy information) must be specified.  The nature of the applicant’s services may include (but not limited to):

 

·        Providing an on-line computer database in the field of life insurance policy information in International Class 36;

 

·        Providing a high speed access to area networks and a global computer information network in the nature of facilitating the management of life insurance policy information in International Class 38;

 

·        Providing multiple user dial-up and dedicated access to the Internet in the nature of facilitating the management of life insurance policy information International Class 38;

 

·        Providing multiple-user access to a global computer information network in the nature of facilitating the management of life insurance policy information in International Class 38;

 

 

·        Providing temporary use of on-line non-downloadable software for [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.] in the field of life insurance policy information in International Class 42.

 

The applicant may adopt the following suggested recitation of services, if accurate:

 

·        “Providing a high speed access to area networks and a global computer information network in the nature of facilitating the management of life insurance policy information; providing multiple user dial-up and dedicated access to the Internet in the nature of facilitating the management of life insurance policy information; providing multiple-user access to a global computer information network in the nature of facilitating the management of life insurance policy information in International Class 38.”

 

The suggested recitation of services specifies and properly classifies the services rendered.  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

This is not an exhaustive list of identifications.  Please check the Office’s website for additional acceptable identifications of goods and services at the following website:

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

New Specimen Required

 

The specimen is unacceptable as evidence of actual service mark use because the mark on the drawing page (“PAT”) does not match the mark on the specimen (“PAT Administrator”).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the 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 all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

The application must include a statement that is signed and verified or supported by a declaration under Section 2.20 by a person properly authorized to sign on behalf of the applicant.  A person who is properly authorized to sign on behalf of the applicant is:  (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. §10.1(c) who has an actual or implied written or verbal power of attorney from the applicant.  37 C.F.R. §2.33; TMEP §804.04.

 

Response

 

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.

 

 

 

 

Christopher Scott Adkins

Examining Attorney

Law Office xxx

(703) 308-91xx ext.xxx437

 

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm