Offc Action Outgoing

This letter responds to applicant’s communication filed on 3/13/09. The applicant or applicant’s counsel is encouraged to direct any questions to the examining attorney at kyle.peete@uspto.gov referencing the serial number in the subject line. For status inquiries, please see the information at the end of this letter regarding the TARR system.

The following requirement(s)/refusal(s) have been satisfied or withdrawn:

(1) Section 2(d) - Likelihood of Confusion Refusal

The following requirement(s)/refusal(s) are now made FINAL:

(1) Identification of Goods/Services

Identification of Goods/Services - Final

The identification of goods/services is unacceptable and must be clarified because the portions identified below are overly broad and/or misclassified. See TMEP §1402.01. The Office requires a degree of particularity necessary to clearly identify the 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).

The applicant is encouraged to view the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html for assistance with identifying and classifying goods and/or services. See TMEP §1402.04. Applicant may adopt the following identification, if accurate, changes in bold italics:

FOR: Electronic device, namely an onboard electronic data collection device which monitors, records and transmits information regarding vehicle's operation, usage, location, and diagnostics, through a GPS signal and data from the ECU and reports data collected from such devices, namely, driving, performance, diagnostic, and environmental reports, and data including vehicle location, speed, driving radius, and associated time of day, through an online website and initiates alerts related to vehicle location and operation based on customized settings to users through e-mail or SMS

INT. CLASS 009 (U.S. CLASSES 021, 023, 026, 036 and 038)

FIRST USE: None USE IN COMMERCE: None CLASS STATUS: 6 - ACTIVE

International Class 035: Providing a website featuring data reports and online internet access to information collected from vehicle monitoring devices, namely, driving, performance, diagnostic, and environmental reports, and data including vehicle location, speed, driving radius, time-of-day, emissions levels, and fuel efficiency for business purposes

International Class 038: Electronic transmission of e-mail or SMS alerts to insurance customers related to vehicle location and operation based upon customized settings

FOR: Property and casualty insurance underwriting and administrative services, namely in the field of motor vehicle insurance;

INT. CLASS 036 (U.S. CLASSES 100, 101 and 102)

FIRST USE: None USE IN COMMERCE: None CLASS STATUS: 6 - ACTIVE

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services set forth in the present identification.

Partial Abandonment

If applicant should fail to respond to this Office action within the six-month period for response, then the identified goods and/or services highlighted above will be deleted from the application. The application will then proceed with the remaining goods and/or services only. 37 C.F.R. §2.65(a).

Response Guidelines

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 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).

/Kyle Christopher Peete/

Trademark Examining Attorney

United States Patent & Trademark Office

kyle.peete@uspto.gov - Preferred Contact

Ph: 571-272-8275 Fax: 571-273-8275

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.