Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  76/481089

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

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.

 

Merely Descriptive – Section 2(e)(1)

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

 

In the present case, applicant is using the mark PROTECT-ALL in connection with “underwriting credit life insurance.”  The word PROTECT, however, is defined as “To keep from being damaged, attacked, stolen, or injured; guard.”  See the enclosed definition from The American Heritage Dictionary of the English Language (1992).  The word ALL is defined as “Being or representing the entire or total number, amount, or quantity.”  See the enclosed definition from American Heritage.  The term PROTECT-ALL, then, when considered in connection with the services at issue, would be perceived by consumers as nothing more than a description of underwriting life insurance policies that are designed to guard one’s entire assets.  As this describes a characteristic of applicant’s services, the mark must be deemed to be merely descriptive.  In addition, the term PROTECT-ALL is frequently used in the insurance industry to describe services such as applicant’s.   See the enclosed representative sample of printouts from the Internet.

 

If, in the alternative, applicant’s services do not involve underwriting life insurance policies that are designed to guard one’s entire assets, the examining attorney nevertheless refuses registration on the Principal Register because the mark is deceptively misdescriptive of the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209.03.

 

A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant services.  If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Barney L. Charlon/

Trademark Examining Attorney

Law Office 105

(703) 308-9105 ext. 130

 

 

pro·tect (pre-tèkt¹) verb, transitive

pro·tect·ed, pro·tect·ing, pro·tects

1.    To keep from being damaged, attacked, stolen, or injured; guard. See synonyms at defend.

2.    To help (domestic industry) with tariffs or quotas on imported goods.

3.                        To assure payment of (drafts or notes, for example) by setting aside funds.[1]

all (ôl) adjective

1.    Being or representing the entire or total number, amount, or quantity: All the windows are open. Deal all the cards. See synonyms at whole.

2.                     Constituting, being, or representing the total extent or the whole: all Christendom.

3.    Being the utmost possible of: argued the case in all seriousness.

4.    Every: got into all manner of trouble.

5.    Any whatsoever: beyond all doubt.

6.                     Pennsylvania. Finished; used up: The apples are all. See Regional Note at gum band.

7.    Informal. Being more than one: Who all came to the party? See Regional Note at you-all.

 

noun

The whole of one's fortune, resources, or energy; everything one has: The brave defenders gave their all.[2]

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

 

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