Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

Requirement for an Acceptable Identification of Services

Please note the following: All issues raised in this office action may be resolved by calling or emailing the undersigned examining attorney (tasneem.hussain@uspto.gov) and authorizing changes consistent with the suggestions/questions in this office action. Upon calling or emailing the examining attorney and authorizing the changes by signing an authorized signatory’s name with forward slashes, an examiner's amendment will be promptly issued.

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

IDENTIFICATION AND CLASSIFICATION OF SERVICES

The identification of services must be clarified because the wording identified below is indefinite and could include services in more than one International Class. See TMEP §1402.01.

International Class 035

The wording “insurance marketing” is unclear as to the nature of the services. If the “marketing” is in the nature of “advertising,” then applicant may so indicate and keep the services in International Class 035.

The wording “financial business consultation” requires further clarification because although “business consultation” on its own is acceptable in International Class 035, the addition of the wording “financial” creates some ambiguity as to whether the services main focus is business-related in International Class 035 or financial-related in International Class 036. Applicant may reword the identification to “business consultation for financial organizations . . .” followed by business-related services.

International Class 036

The wording “consulting” and advisory” in the identification of services is indefinite and must be clarified for some of the fields. See TMEP §1402.01. Consulting and advisory services are classified according to the subject matter of the consulting service. TMEP §1402.11(e). Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the "consulting" and advisory" services. Here, it is unclear what “benefit plans” encompasses and should be clarified as involving “financial” matters.

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

The wording “insurance services” is overbroad and applicant must specify the services in International Class 036 only such as “insurance carrier services” or “insurance brokerage services” so as not to encompass “insurance claims auditing services” in International Class 035.

The wording “life settlement” is unclear as to the nature of the services and must be clarified as either “life insurance” or “retirement”.

Applicant may adopt the following identification, if accurate:

“ADVERTISING AND MARKETING SERVICES IN THE FIELD OF INSURANCE; AND BUSINESS CONSULTATION SERVICES FOR FINANCIAL ORGANIZATIONS IN THE FIELDS OF BUSINESS PORTFOLIO MANAGEMENT, ANALYZING AND COMPILING DATA FOR MEASURING THE PERFORMANCE OF FINANCIAL MARKETS, BUSINESS FEASIBILITY PROPOSAL GENERATION, TRACKING AND MONITORING INSURANCE COMPLIANCE AND BUSINESS RISK MANAGEMENT” in International Class 035; and/or

“BROKERAGE AND CONSULTING SERVICES FOR EMPLOYEE BENEFITS CONCERNING INSURANCE AND FINANCE, NAMELY, HEALTH INSURANCE, ANCILLARY INSURANCE AND RETIREMENT PLANS; BROKERAGE, CONSULTING AND ADMINISTRATIVE SERVICES FOR EXECUTIVE BENEFIT PLANS CONCERNING INSURANCE AND FINANCE; BROKERAGE SERVICES FOR PROPERTY AND CASUALTY INSURANCE; BROKERAGE SERVICES FOR ANNUITIES, DISABILITY, LONG TERM CARE AND LIFE INSURANCE; INSURANCE BROKERAGE SERVICES FOR FINANCIAL INSTITUTIONS; INSURANCE AGENCY SERVICES; ADVISORY SERVICES IN THE FIELDS OF INVESTMENT, WEALTH MANAGEMENT, RETIREMENT PLANNING AND LIFE INSURANCE SETTLEMENT; ADVISORY SERVICES IN THE FIELDS OF BROKER-DEALERS INSURANCE BROKERAGE, REGISTERED FINANCIAL INVESTMENTS, MUTUAL FUNDS, SECURITIES, ANNUITIES, ALTERNATIVE FINANCIAL INVESTMENTS, HEDGE FUNDS, OPTIONS, AND SEPARATE RETIREMENT ACCOUNT MANAGEMENT; AND FINANCIAL DUE DILIGENCE SERVICES FOR INVESTMENT PRODUCTS AND MANAGERS ” in International Class 036

Descriptions of services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14. For guidance on writing identifications of services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

Partial Abandonment Advisory

If applicant should fail to respond to this Office action within the six month time limit, then the application will proceed with the following services only:

“BROKERAGE SERVICES FOR PROPERTY AND CASUALTY INSURANCE; BROKERAGE SERVICES FOR ANNUITIES, DISABILITY, LONG TERM CARE AND LIFE INSURANCE; INSURANCE AGENCY SERVICES; ADVISORY SERVICES IN THE FIELDS OF INVESTMENT, WEALTH MANAGEMENT, RETIREMENT PLANNING; ADVISORY SERVICES IN THE FIELDS OF MUTUAL FUNDS, SECURITIES, ANNUITIES, HEDGE FUNDS, OPTIONS” in International Class 036

37 C.F.R. §2.65(a).

If applicant has questions about its application or needs assistance in responding to this Office Action, please contact the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov. Please note, however, that substantive matters must be addressed in a formal manner; see below for further instructions on how to respond to this Office Action.

/Tasneem Hussain/

Trademark Examining Attorney

Law Office 105

(571) 272-8273

tasneem.hussain@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.