UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/904603
APPLICANT: The St. Paul Travelers Companies, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TRAVELERS INSURANCE. IN-SYNCH.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 78/904603
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Prior Pending Application
The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.
Information regarding pending Application Serial No. 78210834 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.
The current wording used to describe the services needs clarification because it is too broad. Applicant needs to specify the services with which it intends to use the mark in commerce. Applicant may adopt the following recitation of services, if accurate:
Class 36: Insurance {specify type, e.g., underwriting, administration, agency} services in the field of {specify field(s), e.g., life, property, casualty, disability} insurance; financial services, namely, {specify services, e.g., financial planning services, investment advisory services}
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.
Please note that, while the recitation of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the 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/or services that are not within the scope of the services set forth in the present identification.
Applicant has submitted a drawing showing the mark in the color gray, along with black and/or white, but has not specified whether gray is meant to be a color in the mark or the mark is intended to be represented in black and white. There are only two options for presenting the mark: (1) color drawings, and (2) black and white drawings. The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required. 37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e).
(1) If gray is not considered a color or a feature of the mark, applicant must submit the following statement: “The mark is not in color.”
(2) If gray is considered a color and is a feature of the mark, applicant must submit a color claim and description for all the colors in the mark, including black and white. The following format is suggested: “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark. The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element as appropriate].”
Applicant must submit a new drawing with the service mark “SM” deleted because it is not part of the mark. TMEP §§807.02 and 807.14(a).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Rebecca M. Eisinger/
Trademark Attorney
Law Office 102
Phone (571) 272-8845
Fax (571) 273-9102
HOW TO RESPOND TO THIS OFFICE ACTION:
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.