UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/706254
MARK: TRAVELERS INSTITUTE
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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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
IDENTIFICATION OF SERVICES
The recitation of services is unacceptable as indefinite because it combines services in two International Classes. The term, “public policy issues” may not necessarily relate to insurance and financial services and therefore, could include services in other International Classes. Moreover, “analysis and recommendations” requires clarification.
Applicant may adopt any or all of the following identification of services, if accurate:
“Promoting public awareness of the insurance industry and public policy issues impacting it; public policy research services; public policy advocacy to promote awareness of the insurance industry and public policy issues impacting it,” in International Class 35.
“Cost analysis policymakers and regulators regarding public policy issues impacting insurance and financial services,” in International Class 35.
“Financial analysis for policymakers and regulators regarding public policy issues impacting insurance and financial services,” in International Class 36.
See TMEP §1402.01.
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.
REQUIREMENTS FOR COMBINED APPLICATIONS
As indicated above, the application identifies services in two International Classes, however, the applicant has submitted a fee sufficient for only one International Class.
(1) Applicant must list the services by international class; and
(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
DISCLAIMER - SERVICES
Applicant must disclaim the descriptive wording “INSTITUTE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The word is descriptive because it merely describes a characteristic, function, feature, purpose or use of the relevant services.
No claim is made to the exclusive right to use “INSTITUTE” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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 CONFLICTING MARKS NOTED
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
Howard Smiga /hs/
Trademark Attorney
Law Office 102
571-272-9220 Office
571-273-9102 Fax
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.