Offc Action Outgoing

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.

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

This application was filed with the Office on June 9, 2006. The undersigned trademark examining attorney issued an initial Office Action on September 19, 2006, notifying applicant of a prior-filed pending application that could bar registration of its mark, requiring an acceptable recitation of services, requiring clarification of gray appearing in the drawing, and requiring a new drawing of the mark without the service mark symbol (SM).

Applicant filed a timely response on March 19, 2007, adding a new drawing to the application and proposing an amendment to the recitation of services. The new recitation of services is acceptable. The prior-filed pending application has since abandoned, rendering moot any issue of likelihood of confusion. In addition, the examining attorney notes that Office practice regarding gray in drawings has changed since the initial examination of the mark; that requirement is therefore withdrawn. However, because the new drawing deletes a significant design element that was in the initial drawing, the examining attorney now refuses the new drawing and reinstates the original, as explained below. The requirement for a new drawing that does not contain the service mark (SM) is therefore maintained and continued.

Proposed Substitute Drawing Unacceptable

The proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq. See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).

The mark in a drawing cannot be amended if the change would materially alter the mark. TMEP §807.14. The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(c). In this case, the original drawing contains not only the text “TRAVELERS INSURANCE. IN-SYNCH.” but also a highly stylized design element that is an integral part of the mark overall. The proposed new drawing contains the same text but does not include the design element, creating a different commercial impression than the original mark. For this reason, the examining attorney rejects the proposed new drawing and reinstates the original drawing filed with the application.

New Drawing Required

As explained in the initial Office Action, the original drawing of the mark contains matter that is not part of the mark, i.e., the service-mark symbol (SM). Applicant must submit a new drawing with “SM” deleted because it is not part of the mark. TMEP §§807.02 and 807.14(a).

To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication. The requirements for an electronically submitted special-form drawing are as follows:

The digitized image must be in JPG format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.

37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c).

Questions

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

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
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. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

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.