Offc Action Outgoing

This letter responds to the applicant’s communication filed on December 23, 2009. The applicant’s disclaimer of INSTITUTE is accepted and is entered into the record.

In the prior Office Action, the examining attorney found the applicant’s recitation of services to be unacceptable as indefinite. Accordingly, the applicant was required to provide an acceptable recitation of services without going beyond the scope of the original recitation.

In its Response, the applicant submitted an amendment to the recitation of services, however, the amendment remains unacceptable. For the reasons below, the recitation of services requirement is maintained and is made FINAL.

IDENTIFICATION OF SERVICES

In the original Office Action, the examining attorney found the identification of services to be unacceptable as indefinite inasmuch as the exact nature of the services is unclear. The examining attorney further provided suggestions as to proper identifications. In its Response, the applicant provides the following wording:

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 and financial services industry and public policy issues impacting it; and providing information, analysis and recommendations in the field of insurance and financial services in connection with advancing public interest and public policy issues impacting the industry

The applicant’s amendment to the identification of services is still indefinite because, as worded, the exact nature of the services is unclear. Specifically, the applicant’s “providing information, analysis and recommendations in the field of insurance and financial services in connection with advancing public interest and public policy issues impacting the industry” is unacceptable inasmuch as it includes services in at least two International Classes.

Applicant may adopt any of the following recitations, 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 and financial services industry and public policy issues impacting it; promoting public interest and public policy in the insurance and the financial services industry,” 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.

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the 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 services that are not within the scope of the services 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.

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.

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(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).

Accordingly, the identification of services requirement is MAINTAINED and is made FINAL.

CONCLUSION

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).

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.