UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/006861

 

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

NO CONFLICTING REGISTRATIONS

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

 

THE SERVICES DESCRIPTION IS INDEFINITE IN PART

 

Much of the wording in the identification of services needs clarification because it is at once indefinite and impermissibly overbroad.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer.  TMEP §1402.01.

 

“Financial services,” without more is improperly indefinite and overbroad. This phrase must be followed by “namely” and a list of applicant’s financial services, e.g. “financial clearing houses, financial due diligence, financial exchange, financial information processing, financial forecasting, financial investment in the field of (specify), financial management, financial planning, financial risk management, financial services in the nature of an investment security, financial services, namely, assisting others with the completion of financial transactions for stocks, bond, securities and equities.

 

“Insurance,” by itself, is overbroad. Insurance comes in the following primary flavors, Underwriting, Administration, brokerage, agencies and claims adjustment. To the foregoing must be added the particular type of insurance e.g. “Accident insurance underwriting” or “Fire insurance underwriting. “Insurance administration” or “Insurance brokerage” or “Insurance actuarial services are all fine without the specific insurance type. The online ID Manual is suggested for reference.

 

Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

“Insurance underwriting” needs the addition of the type of insurance being underwritten, e.g. Life, Property, Fire, “for all types of insurance.”

 

Both “insurance brokerage” and “insurance consultation” (not “consultancy”) are fine.

 

“Reinsurance” must be amended to “reinsurance underwriting.” “Assurance” must be amended to “Guarantee assurance underwriting.”

 

“Investment services” must be followed by “namely” and a list of such services made, specifically, as they are known in the United States. “Financial analysis” is fine if it is paired with “consultation” rather than “evaluation.”

 

The last service would be best articulated as follows: “providing information and consultation in the fields of financial services, insurance services, and investment services.”

 

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.

 

 

 

 

INFORMAL COMMUNICATIONS

 

The most expeditious way to solve disclaimer or goods or services description issues is by informal E-mail or voicemail. The following personal contact information is for applicant’s convenience, for trial runs, discussions or solutions involving examiner’s amendments.

 

Jill C. Alt

jill.alt@uspto.gov

(571) 272-9444 (Tel.)

(571) 273-9444 (Fax)

 

Formal communications must utilize the TEAS system of electronic response or the United States Postal Service.

 

 

 

/Jill C. Alt/

Trademark Attorney

Law Office 114

Tel. (571) 272-9444

Fax: (571)273-9444

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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