Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 78781487 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION DATED June 23, 2006

 

Applicant, Travelers Insurance Group Holdings, Inc., hereby responds to Examiner’s Office Action dated June 23, 2006.

 

 

1. ACQUIRED DISTINCTIVENSS

Applicant withdraws the claim of acquired distinctiveness for WRAP+.  Applicant intended to make a claim of prior ownership for THE WRAP and design and THE WRAP, Registration Nos. 2735845 and 3017882, respectively, and inadvertently made a 2(f) claim based upon these prior registrations.  However, neither of these prior applications disclaimed “wrap” or were based upon a 2(f) claim.

 

2. DISCLAIMER

The examining attorney requires the Applicant to disclaim the wording “WRAP” apart from the mark as shown because the wording is a generic term for a specific type of insurance product.  Although the examining attorney may be correct in determining that the “wrap” is generic for a specific type of insurance product, Applicant’s services are not related to the specific type of insurance product nor does the term have any particular meaning with respect to the genus or class of services that are applicable to Applicant’s services.

The Patent and Trademark Office bears the burden of showing that a proposed mark is generic. In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (reversing refusal to register because usages shown by NEXIS “does not show, by clear evidence, that [the relevant public] views or uses the term … as a generic common descriptive term”). Moreover, the Examining Attorney is required to make a "substantial showing ... that the matter is in fact generic." Merrill Lynch, 4 USPQ2d at 1143. Further, this substantial showing “must be based on clear evidence of generic use.” Merrill Lynch, 4 USPQ2d at 1143 (emphasis added); see also In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994) (“a strong showing is required when the Office seeks to establish that a term is generic”); In re Recorded Books, Inc., 42 USPQ2d 1275, 1277 (TTAB 1997). Finally, any doubt whatsoever on the issue of genericness must be resolved in favor of the applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993); In re Volvo White Truck Corp., 16 USPQ2d 1417, 1421 (TTAB 1990). Applicant believes that the Examining Attorney has not met the Office’s burden in this case.

            The Federal Circuit has stated a two-part test for determining whether a term is generic and therefore incapable of distinguishing applicant's services: First, a determination must be made of the genus, or class of services to which the applicant's services belong. Next, there must be a showing that the public understands the term sought to be registered to refer to that genus of class of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 792 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Here, the Examining Attorney demonstrates that the term “wrap” is used for a specific type of insurance product but fails to establish that the genus of services is the same as or extends to Applicant’s services.

First, the examining attorney must determine the genus, or class of services to which the applicant's services belong.  Applicant uses WRAP+ in connection with insurance underwriting services, namely underwriting executive liability, directors and officers liability, employment practices liability, fiduciary liability, miscellaneous liability, professional liability, crime, kidnap and extortion for ransom, and identity fraud expense coverage. It is considered a policy suite of executive liability coverages for private companies or non-profit organizations to protect corporate and personal assets of directors, officers and fiduciaries.   These types of coverages or lines of business are generally referred to as executive protection or executive liability coverages.  See attached.  The genus or class of services applicable to Applicant’s product may be considered to fall within the broad categories of insurance, property and casualty insurance, or within the subclass referred to as executive protection or executive liability insurance.   

The examining attorney submits evidence showing use of “wrap.”  However, upon review of the evidence, the specimens show use related to the construction and building industry.  Applicant acknowledges that “wrap-up” is a term of art within the construction industry which refers to a method of procuring insurance for large construction projects.  The concept is articulated in the examining attorney’s specimen # ___.  “With a wrap-up program, the owner furnishes a single insurance program for all parties involved in the project(s) for duration of the project term. This insurance relates to the exposures of the project and protects the project owner, contractors, and all tiers of subcontractors. Most wrap-ups include workers' compensation, general and excess liability, and builder's risk coverages (auto liability and contractor's equipment are not included). Wrap-ups can include project architects/engineers errors and omissions coverage and other optional coverages.”    

This description of “wrap-up” programs is reinforced by the Federal Highway Administration of the U.S. Department of Transportation which states that “An Owner Controlled Insurance Program (OCIP), sometimes referred to as a “Wrap Up Insurance,” is the purchasing of insurance by the owner of behalf of the builder (contractors) rather than the traditional purchase by the contractor for the contractor and owner for the owner.  The insurance covers contractors, subcontractors, construction management and state employees working on the construction site who are approved by the owner for participation in the program.”  (See attached exhibit).

In addition, the International Risk Management Institute (IRMI) posts commentary from Richard Resnick, an expert in wrap-up programs on its website.  Mr. Resnick agrees that “[W]rap ups” change the way liability and workers compensation insurance is procured for large construction projects.  Traditionally subcontractors provide their own insurance as required by the owner for a project.  In addition, owners may purchase a contingency policy to protect their own interests.  Owners turned to wrap-up policies which wrapped-up all the workers compensation and liability insurance for onsite contractors, Including the general contractor or construction manager) and owners of the project site. (See attached).

As demonstrated above, the genus or class of services to which “wrap-up” belongs is clearly known in the industry as a specific type of insuring program which provides a method for owners and contractors to insure large construction projects.  It is a non-traditional approach to the purchase of insurance geared toward a narrow audience for a niche market.  At best, the term “wrap-up” or “wrap” is used to describe a specific subclass of insurance product within the field of construction. 

In contrast, Applicant uses WRAP+ in connection with insurance underwriting services, namely underwriting executive liability coverages to protect corporate and personal assets of directors, officers and fiduciaries.  This product is sold in a traditional manner to private companies or non-profit organizations.  It is a specific type of product that is unrelated to the procurement program for contractors described above. 

Although the examining attorney may have correctly identified “wrap” as a term of art which applies to a specific type of insurance program, the examining attorney erred in concluding that the specific type of insurance applies to Applicant’s services.  Insurance or property casualty insurance are the primary categories or classes of services.  Within these broad categories, there are many subclasses.  “Wrap up,” as used within the insurance industry, may well be considered the genus for the specific type of insurance program for a contractor’s procurement of insurance for a large construction project.  However, executive protection or executive liability is the genus or subclass of insurance related to Applicant’s services.  

Secondarily, there is no evidence to suggest that the public perceives the term the “wrap” to refer to Applicant’s services.  The evidence suggests that the “wrap” has a discrete meaning within the construction and building industry.  There is no evidence to suggest that the use of “wrap” extends to or has any particular meaning within the subclass referred to as executive protection or executive liability.

Furthermore, the fact that “wrap” or “wrap-up” is used as a term of art within the construction industry does not preclude its use and ability to be considered suggestive for other types of insurance services or products used for the insurance industry.  Applicant’s position is supported by the fact that the USPTO has issued registrations for trademarks that use or incorporate “wrap” that are used in connection with the field of insurance and financial service industry without disclaimers or 2(f) claims, including two prior registrations owned by Applicant, which are set forth below and for which ownership is claimed.  (See attached exhibits).  There are two additional registrations for Z-WRAP and WRAP.NET where the services are related to both the fields of construction and insurance without disclaimers or 2(f) claims. (See attached exhibits).

 

Mark	Description	Disclaimer or 2(f)	Owner
The Wrap (Reg. No. 3017882)	insurance underwriting services, namely underwriting executive liability, directors and officers liability, employment practices liability, fiduciary liability, miscellaneous liability, professional liability, crime, kidnap and extortion for ransom, and identity fraud expense coverage	None	Travelers Insurance Group Holdings, Inc.
The Wrap and design (Reg.No. 2735845)	insurance underwriting services, namely underwriting executive liability, directors and officers liability, employment practices liability, fiduciary liability, miscellaneous liability, professional liability, crime, kidnap and extortion for ransom, and identity fraud expense coverage	None	Travelers Insurance Group Holdings, Inc.
Z-wrap (Reg. No. 76030447)	Providing risk management services and property and casualty insurance underwriting services to the construction trade	None	Zurich Insurance Company
Wrap.net (Reg. No. 2441956)	Computer software for online construction project management in the field of insurance	None	Bay Technology Group, LLC
Lexreswrap (Reg. No. 2993385)	Insurance underwriting services n, namely general liability and property and casualty insurance	None	American International Group, Inc.
RAP (Reg. No. 1710390)	Accelerated insurance underwriting services in the field of mortgage guaranty insurance	None	AIG
Healthwrap (Reg. No. 2745607)	Insurance services, namely, design and administration of health care insurance plans for others	None	American Medical Security Grouip, Inc.
CMM Wrap (Reg. No. 1888858)	Administration of Employee benefit plans	None	Michigan Employee Benefits services, Inc.

 

Consequently, although the examining attorney correctly identified the “wrap” as applying to an insurance program for contractors of large construction projects, the term does not extend to or have any particular meaning for Applicant’s services or the subclass referred to as executive protection or executive liability insurance.  Further, any doubt must be resolved in favor of the Applicant.

 

CONCLUSION

 

In view of the foregoing, Applicant respectfully submits that the application is now in condition for allowance and publication for purposes of opposition.  Such publication is respectfully requested.

Evidence

JPG file(s):
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_6918014762-225408743_._Guide_to_FHWA_Funded_Wrap-Up_Projects_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._Wrap-Ups_Back_to_Basics_-_Expert_Commentary_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._The_Wrap_-_Serial_No._78488731_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._The_Wrap_-_Serial_No._76151020_1_.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6918014762-225408743_._Z-Wrap_-_Serial_No._76030447_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._Wrap.Net_-_Serial_No._75725926_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_1-6918014762-225408743_._Wrap.Net_-_Serial_No._75725926_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._Lexreswrap_-_Serial_No._78421691_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6918014762-225408743_._RAP_-_Serial_No._74098622_1_.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6918014762-225408743_._Healthwrap_-_Serial_No._75911651_1_.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6918014762-225408743_._Cmm_Wrap_-_Serial_No._74514238_1_.pdf
Converted PDF file(s) (1 page)
Evidence-1

Additional Statements

"Applicant claims ownership of U.S. Registration Number(s) 2735845, 3017882."

Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /rrf/     Date: 12/26/2006
Signatory's Name: Robin Ramswick Fuller
Signatory's Position: Corporate Counsel
        
Serial Number: 78781487
Internet Transmission Date: Tue Dec 26 23:09:45 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006122623094550
4905-78781487-3609c522b38657de74148cb1e4
7ae1bf15f-N/A-N/A-20061226225408743368