Offc Action Outgoing

This Office action is in response to applicant’s communication filed on December 23, 2008. The amended identification of goods and services remains unacceptable for the reasons below. The requirement to amend the identification of goods and services is made FINAL.

IDENTIFICATION OF GOODS

Applicant must clarify the amended identification of goods and services by removing the indefinite wording. See TMEP §1402.01. Specifically, the administrative services in IC 36 appear to identify services that must be classified in IC 35.

Applicant may adopt the following identification of goods, if accurate: See TMEP §1402.01.

Class 9 - Electronic device, namely an onboard electronic data collection device which monitors, records and transmits information regarding the location, vehicle diagnostics, and operation of the vehicle through a GPS signal and data from the ECU, reports data through online website, and initiates alerts based on customized settings to users through e-mail or SMS;

Class 36 - Property and casualty insurance underwriting and administrative services, namely in the field of motor vehicle insurance and value added services, namely providing e-mail or SMS alerts to customers pertaining to location, speed, and time of day of motor vehicle accident claims, [clarify “logistical support”], administrative insurance claims processing, [clarify “marketing support” this seems to identify services in IC 35], insurance data reports, and online access to vehicle location, diagnostics and operation data all related to insurance claims

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966).

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

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. See TMEP §1402.04.

COMBINED/MULTIPLE CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services that may be classified in more than two classes; however, the fees submitted are sufficient for only two classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).

The filing fee for adding classes to an application is as follows:

(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

FINAL - OPTIONS

If applicant does not respond within six months of the mailing date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: “value added services, namely e-mail or SMS alerts to customers pertaining to location, speed, and time of day, logistical support, administrative processing, marketing support, data reports, and online access to location, diagnostics and operation data” in IC 36. The application will then proceed forward for the remaining goods and services. The application will then proceed for the remaining goods and services. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Mrs. A. D. Saunders/

Trademark Attorney

Law Office 109

(571) 272-9349

(571) 272-9250 Trademark Assistance Center

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please 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.

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.