UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/547537
APPLICANT: THE HARTFORD STEAM BOILER INSPECTION AND ETC.
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CORRESPONDENT ADDRESS: PETER L. COSTAS PEPE AND HAZARD LLP 225 ASYLUM ST FL 20 HARTFORD CT 06103-1507
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: HSB
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CORRESPONDENT’S REFERENCE/DOCKET NO: HSB-158/3022
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 76/547537
The assigned trademark examining attorney has reviewed the referenced application filed on September 30, 2003, and has 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.
The recitation of services is unacceptable as indefinite. Applicant must either clarify the areas covered by its insurance services or state that the services cover “all types of insurance.” The applicant may adopt the following recitation, if accurate:
“Insurance underwriting services [specify field, e.g. in the field of life, health, accident, fire, or instead state “for all types of insurance”], in International Class 36.”
TMEP §1402.11.
The applicant may want to consult The Acceptable Identification of Goods and Services Manual, published by the U.S. Patent and Trademark Office which is available on-line at www.gov.uspto.report/web/offices/tac/doc/gsmanual/. As set forth in the TMEP, this manual "contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney." TMEP sec. 1402.04.
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 goods or services that are not within the scope of the goods and services recited in the present identification.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. In the present case, the drawing displays the mark as HSB, and the specimen shows the mark as HSB FREESTYLE. 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i). Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.
Therefore, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. 37 C.F.R. §2.51; TMEP §807.14.
The following is an example of a proper statement and declaration:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
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 the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
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(Date)
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.
If applicant amends to base the application on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
CLAIM OF OWNERSHIP
The applicant must submit a claim of ownership of pertinent prior registrations. 37 C.F.R. Section 2.36; TMEP section 812. When applicant can claim ownership of many related registrations, the ownership claim should be limited to the highest and lowest registration numbers, followed by “AND OTHERS.” The applicant may use the following form for the claim of ownership:
“The applicant is the owner of U.S. Registration Nos. 2682910, 2218882 AND OTHERS.”
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. 37 C.F.R. Section 1.4(b); TMEP section 306.04; Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/John M. Gartner/
Trademark Examining Attorney
Law Office 102
(703) 308-9102 ext. 134
(703) 746-8102 (fax)
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 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.