UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/680497
MARK: ASCOT
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Ascot Underwriting Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.
Prior Pending Mark
Information regarding pending Application Serial No. 77201704 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
The recitation of services is indefinite and must be clarified, because applicant needs to specify the type of insurance services. TMEP §1402.01. For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. Applicant may adopt the following identification, if accurate:
Class 36 “insurance services, namely, insurance underwriting services for all types of insurance” in Class 36.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
The color claim statement disagrees with the colors depicted in the mark shown on the drawing and the color location statement has been omitted from the application. The drawing shows the mark in the color red, pink, purple, dark blue, blue, light blue, light green, dark green, yellow, tan and white; however the color claim specifies red, pink, purple, blue and green and blue. The color drawing, color claim and location statement must agree. 37 C.F.R. §2.52(b)(1); TMEP §807.07(c).
Therefore, applicant must submit either: (1) a corrected color claim and location statement that agree with the colors depicted in the drawing of the mark, or (2) a color drawing that agrees with the color claim and location statement.
If applicant chooses option (1), the following color claim and/or location statement are suggested:
The colors red, pink, purple, dark blue, blue, light blue, light green, dark green, yellow, tan and white are claimed as a feature of the mark.
The following colors appear in horizontal bands within a square background shape starting from the top, red, pink, purple, dark blue, blue, dark blue, blue, light blue, light green, dark green, light green, dark green, yellow, tan, red and pink. The word ASCOT appears in white lower-case-lettering superimposed against the colored bands in the lower-right-hand corner of the box design.
If applicant submits a substitute drawing, applicant is advised that amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; TMEP §807.14.
If applicant claims any color in the mark, the color claim and color location statement in the application must include all the colors in the mark including black, white and gray. 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. If black, white and gray are not being used as color in the mark, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas, and is not part of the mark.
The application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the goods and/or services identified in the application. An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Therefore, applicant must submit the following:
(1) A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.56(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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 as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark. 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/AMY GEARIN/
Trademark Attorney
Law Office 115
United States Patent and Trademark Office
571-272-9473
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.