Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/553422

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search of the Office Records

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods and Services

 

The identification of goods listed in International Classes 16, 18 and 28 is acceptable.

 

The wording “rendering technical aid and assistance in the establishment and/or operation of financial consulting and brokerage services; promoting the sale of goods and/or services of others by advertising campaigns; business counseling in regard to cost management” and “employment rehabilitation services, namely, cost control, business consultation in the field of family and medical leave, disability, workers' compensation and employee benefits and employment placement services, and medical care coordination, namely, assisting employers and providers in processing medical claim forms and payment of medical claims” in the identification of services listed in International Class 35 needs clarification because the exact nature of the services is not clear.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The wording “counseling in regard to accident prevention and claims administration,” “agency and brokerage services in connection with the preceding named services,” “providing the preceding named insurance and financial services via the Internet” in the identification of services listed in International Class 36 needs clarification because it is not sufficiently specific.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The wording “providing consulting services to insurance agents in the field of computer utilization; Providing information in the field of health care through the Internet; rehabilitation services, namely, assessment of disability and return to work status and rehabilitation planning” in the identification of services listed in International Class 42 needs clarification because it is too broad and could include services classified in other international classes.  TMEP §§1402.01 and 1402.03.

 

For assistance with identifying 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.

 

The applicant may adopt the following identification of services, if accurate: 

 

Calendars, pens and decals, publications, namely, catalogs, newsletters, bulletins, booklets and magazines containing news and information in the fields of insurance, health care and financial planning, in International Class 16; and/or

 

Umbrellas, tote bags, luggage tags, wallets, business card cases, and briefcase-type portfolios, in International Class 18; and/or

 

Sporting goods, namely, golf balls, golf ball markers, golf clubs, and tennis balls, in International Class 28; and/or

 

Direct mail marketing services for others in the field of insurance brokerage; consultation services in the field of establishment and operation of financial consulting and brokerage services; promoting the sale of goods and/or services of others by through the distribution of printed material and promotional contests; business consultation in regard to cost management; employment counseling services for retired persons; cost management for the health care benefit plans of others; business consultation in the field of family and medical leave, disability, workers' compensation and employee benefits; insurance claims administration and processing, in International Class 35; and/or

 

Insurance and financial services, namely underwriting, administration and claim processing services for all forms of property, casualty and liability insurance and fidelity, surety and guaranty bonding services; consultation in the field of accident prevention and claims administration; underwriting and administration services in the field of stocks, bonds, mutual funds and securities services, real estate investment services, financial analysis and investment planning and management services; agency and brokerage services in connection with property, casualty and liability insurance and fidelity, surety and guaranty bonding services; credit and debit card services; commercial and consumer lending and financing; providing underwriting, administration and claim processing services for all forms of property, casualty and liability insurance and fidelity, surety and guaranty bonding services via the Internet, in International Class 36; and/or

 

Providing consulting services to insurance agents in the field of computer utilization, in International Class 42; and/or

 

Providing information in the field of health care through the Internet; medical evaluation services, namely functional assessment program for patients receiving medical rehabilitation services for purposes of guiding treatment and assessing program effectiveness, in International Class 44.

 

Please note that, while the identification of goods and services may be amended to clarify or limit the goods and services, adding to the goods and services or broadening the scope of the goods and services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and services that are not within the scope of the goods and services set forth in the present identification.

 

Multiple-Class Application

 

The applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least seven (7) international classes, however applicant paid the fee for only six (6) classes.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

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

 

(1)     Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Applicant’s Response

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

 

 

/Michael J. Souders/

Trademark Examining Attorney

Law Office 115

(571) 272-9483

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.