UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/464255
MARK: IM EXPRESS
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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: The Travelers Indemnity Company
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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.
This Office action is in response to applicant’s communication filed on December 23, 2008. The amended recitation of services remains unacceptable for the reasons below. Applicant’s arguments concerning the disclaimer requirement have been considered and found unpersuasive for the reason(s) set forth below. The following issues are continued. In addition, the applicant must provided the claim of ownership identified below.
DISCLAIMER
The requirement to disclaim the descriptive term EXPRESS is continued because the term describes the speed of the service being provided. See the attached evidence which describes the applicant’s services. Specifically the applicant’s advertisements states: “IM Express is your simple solution to obtaining fast and competitive quotes for Inland coverages…With IMExpress you can rate, quote and bind coverage online in minutes.” The advertisement also states: “Accelerate the sales cycle with time-saving features such as:…A professional quote proposal that is immediately available to view and print…Our real-time referral process is supported by our dedicated IMExpress team.”
Thus, the applicant’s own advertisement promotes the speed or ease of providing its insurance services. Therefore the term is descriptive and must be disclaimed. See also the attached evidence of 3rd party registrations wherein the Office has required a disclaimer of EXPRESS for insurance services.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
No claim is made to the exclusive right to use “EXPRESS” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
RECITATION OF SERVICES
The amended recitation of services remains unacceptable because the applicant must clarify the “non-downloadable interface” being provided. The applicant must adopt the following, if accurate:
Class 42 - Property and inland marine insurance services, namely online, non-downloadable interface SOFTWARE for quoting, rating and binding insurance coverage
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.
OWNERSHIP OF PRIOR REGISTRATIONS
If applicant is the owner of U.S. Registration No(s). 3518406 [INLAND MARINE EXPRESS], then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration No(s). 3518406.
/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.