Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77464255 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant, The Travelers Indemnity Company, hereby responds to Examiner's Office Action dated June 23, 2008.

The Examiner requires that Applicant disclaim exclusive right to the "EXPRESS" portion of the mark on the basis that it merely describes the speed or feature of the services, namely, services to be delivered without delay. Respectfully, Applicant does not believe that IM EXPRESS automatically connotes to the consumer that applicant is providing insurance underwriting services without delay but rather that "express" is suggestive requiring consumers to make a mental leap to associate IM EXPRESS with Applicant's insurance underwriting services and online nondownloadable interface. Further, the Trademark Office has previously taken the position that "EXPRESS" is not descriptive.  Notably, Applicant owns a registration for "INLAND MARINE EXPRESS", Registration No. 3518406, in connection with " Providing temporary use of online, non-downloadable software for agents to quote, bind, and issue insurance policies in the fields of property and inland marine insurance services " on the Principal Register (see attachment). This registration covers the same services as the present application and does not contain a disclaimer of the word "EXPRESS."  This indicates that "EXPRESS" is not descriptive when used in connection with such services.  In addition, other third party registrations for related services on the Principal Register have not been required by the Trademark Office to disclaim the wording "EXPRESS" (see attachment).  These registrations illustrate that the Trademark Office does not necessarily find that "EXPRESS" is descriptive when used in connection with insurance or related services or by providing such services through online non-downloadable software.  Applicant's mark should be treated similarly.  Applicant asks that the Examiner lift the descriptiveness refusal with respect to the word "EXPRESS" in Applicant's mark.

Mark	Reg. No.	Disclaimer	Description
Inland Marine Express	3518406	None	IC 42: Providing temporary use of online, non-downloadable software for agents to quote, bind, and issue insurance policies in the fields of property and inland marine insurance services.
Compliance Express	3150569	None	Providing web-based online non-downloadable software for use in electronically completing, protecting, and transferring documents shared between an applicant, insurance carrier and a state, relating to license applications, appointments, letters of certification, renewals and terminations, background investigations, and tracking educational requirements all within the field of insurance regulation.
Work-Life Express	3399429	None	IC 36: Providing information and consulting in the field of finance, real estate and insurance via a customizable interactive website; IC 42: Providing information and consulting services in the field of legal matters via a customizable interactive website.
Integration Express	3198111	Integration	IC 42: Providing temporary use of off-line non-downloadable software for use in enterprise application integration, namely allowing synchronization of a carrier's internal applications with its compliance applications for the purpose of processing appointments within the insurance industry.
Express Repair Link	2925978	None	IC 42: Application service provider featuring software which facilitates the integration of insurance claims and collision repair processes.
Grange Agentware Express	2996880	None	IC 42: Providing temporary use of non-downloadable computer software that enables a real time connection between an insurance agency management system and an online insurance policy quoting, issuance and policy servicing system.
Individual Express	2674070	Individual	IC 36: Underwriting insurance for pre-paid health care; administration of preferred provider plans and health maintenance organizations in the field of health care insurance, namely, enrollment and processing applications over the global computer network; IC 42: health care in the nature of health maintenance and preferred provider organizations and other managed care type entities.
Library Express	3104411	Library	IC 42: Providing temporary use of on-line non-downloadable computer software for document automation and electronic presentment of information, namely for document creation, production conversion recording, indexing archiving, printing, displaying, publishing, transmission, encryption, management, typography, and distribution, all for high volume documents in the field of property and casualty insurance via a global computer information network.
Term Life Express	3420619	Term Life	IC 36: Insurance underwriting in the field of life insurance.
HSA Express	3519807	HSA	IC 36: Debit card services, namely, providing debit cards for use in relation to health care accounts and providing health care debit card account information over the Internet; administration and processing of health care insurance reimbursement claims; IC 42: Providing health care information over the Internet.

CONCLUSION

In light of the above arguments, Applicant respectfully asserts that its "IM EXPRESS" mark is capable of registration on the Principal Register without a disclaimer of "EXPRESS" and requests that its mark proceed to publication.

EVIDENCE
Evidence in the nature of Applicant's prior registration for Inland Marine Express and other third party registrations for related services on the Principal Register that have not been required by the Trademark Office to disclaim the wording "EXPRESS" has been attached.
Original PDF file:
evi_2-170202221-121536194_._Evidence.pdf
Converted PDF file(s) (20 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Providing property and inland marine insurance services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 036 for Property and inland marine insurance underwriting services; providing information in the field of property and inland marine insurance
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Property and inland marine insurance services, namely an online, non-downloadable interface
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 042 for Property and inland marine insurance services, namely an online, non-downloadable interface for quoting, rating and binding insurance coverage
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /rrf/      Date: 12/23/2008
Signatory's Name: Robin Ramswick Fuller
Signatory's Position: Senior Counsel

Response Signature
Signature: /rrf/     Date: 12/23/2008
Signatory's Name: Robin Ramswick Fuller
Signatory's Position: Senior Counsel

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77464255
Internet Transmission Date: Tue Dec 23 17:14:13 EST 2008
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20081223171413262
853-77464255-4306b2cb2403ca98f4d64d17bda
1639f1fe-N/A-N/A-20081223121536194350