Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

THIS IS A FINAL ACTION.

Introduction

This Office action is in response to applicant’s communication filed on January 24, 2013. In the initial Office action, the Examining Attorney issued requirements for the following:

Requirement for Disclaimer

Requirement for Acceptable Identification of Goods and Services (and compliance with multiple-class application requirements)

Requirement for Additional Information

Requirement for Signed and Verified Application

The applicant’s response satisfies the requirements for a disclaimer, and for a signed verification. The applicant has amended the identification and submitted some additional information, but for the reasons discussed below, these requirements are now made final as to specified services.

Summary of Issues Applicant Must Address

Requirement for Acceptable Identification of Services
Requirement for Additional Information

FINAL Identification and Classification of Services Requirement – As to Specified Services in Classes 35 and 45

The requirement for a definite and properly classified identification of services is now made FINAL as to specified services for the reasons set forth below. 37 C.F.R. §2.64(a); TMEP §1402.01.

In response to the requirement issued in the previous Office action, the applicant amended its services to the following:

Monitoring consumer credit reports and providing an alert as to any changes therein; credit card registration services; credit card cancellation services for lost or stolen cards; credit card monitoring services for lost or stolen cards; providing assistance in the prevention of unwanted telephone calls, namely, registration on "do not call" telephone lists; social media monitoring, namely, monitoring personal use of computer, Providing consultation in the field of commercial mailing lists, namely, consultation relating to removal from such lists to prevent delivery of junk and unsolicited commercial mail, in Class 35.

Identity theft protection and identity fraud protection services; Identity theft protection and identity fraud protection services, namely, personal information and financial identity monitoring; fraud resolution assistance, namely, providing advice and consultation in the field of Identity theft protection; Identity theft and fraud protection services, namely, internet surveillance of financial and personal information; providing online information in the field of identity theft protection; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; Fraud detection services in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, insurance, loan, and other financial accounts; monitoring the Internet, public records, private and public electronic databases to facilitate the detection of identity theft and fraud; Identity theft protection services, namely, analyzing public and personal information and providing a report assessing risk of identity theft; Providing a web site featuring non-downloadable videos in the field of identity theft protection and identity fraud protection; monitoring consumer credit reports to facilitate the detection of identity theft and fraud; monitoring of computer systems for safety purposes, namely, monitoring personal use of computer and providing reports in support thereof; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on mobile phones, in Class 45.

No amendments were made to the applicant’s goods in Class 9, which were previously found to be definite and properly classified. The applicant’s amended identification for Classes 36 and 39 is definite and properly classified. This requirement is limited to the services highlighted above in bold.

Computer monitoring services

The proposed amendment to the identification cannot be accepted because the following wording refers to services that are not within the scope of the identification that was set forth in the application at the time of filing: “social media monitoring, namely, monitoring personal use of computer,” in Class 35, and “monitoring of computer systems for safety purposes, namely, monitoring personal use of computer and providing reports in support thereof,” in Class 45. See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording because the applicant has deleted the limiting language “of family members,” and “for parental supervision purposes.”

While an applicant may clarify or limit the identification of goods and/or services, adding to or broadening the scope is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a). Because this wording only identifies services in Class 45, the applicant must delete this wording from Class 35 and may either delete the services from Class 45 or reinstate the limiting language “of family members,” and “for parental supervision purposes.” See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

Fraud resolution services

In the previous Office action, the wording “fraud resolution assistance, namely, providing advice and consultation in the field of identity theft” in the identification of services was found to be indefinite and required clarification because advice and consultation in the field of fraud and identity theft protection are classified in Class 45, but fraud resolution advice and consultation is broad enough to include financial services in Class 36. See TMEP §1402.01. Therefore, the applicant was required to clarify the specific service provided and classify the service in the appropriate class. The applicant was provided suggestions for amending this wording in Class 36, but no suggestions for amendment were provided in Class 45.

The applicant has amended this wording to “fraud resolution assistance, namely, providing advice and consultation in the field of identity theft protection.” This wording is still indefinite because it combines two different phases of services. Again, services that are designed to protect an individual from identity theft and fraud, especially services that monitor and detect identity theft and fraud are classified in Class 45. However, once the identity theft or fraud occurs, the services transition from protection services to resolution services. Most resolution services relating to fraud and identity theft tend to be financial services, such as credit restoration and reimbursement for fraudulent credit card charges. Such services are classified in Class 36. The information now provided by the applicant indicates that its resolution services also include advice regarding filing police reports. Because services involving the police are safety and security services in Class 45, related advice and consultation are also properly classified in that class. Therefore, the applicant must still amend the wording “fraud resolution assistance, namely, providing advice and consultation in the field of identity theft protection” to delete the term “protection” and to properly identify fraud resolution services. Suggestions are provided below.

To summarize, applicant may adopt any or all of the following identifications of services, if accurate:

Monitoring consumer credit reports and providing an alert as to any changes therein; credit card registration services; credit card cancellation services for lost or stolen cards; credit card monitoring services for lost or stolen cards; providing assistance in the prevention of unwanted telephone calls, namely, registration on "do not call" telephone lists; Providing consultation in the field of commercial mailing lists, namely, consultation relating to removal from such lists to prevent delivery of junk and unsolicited commercial mail, in Class 35.

Providing identity theft insurance underwritten by others; Providing credit reporting data maintained by others; credit management services, namely, assistance with restoring credit damaged by identity theft; fraud resolution assistance, namely, providing financial advice and consultation in the field of identity theft regarding credit repair and restoration and credit card fraud reimbursement, in Class 36.

Identity theft protection and identity fraud protection services; Identity theft protection and identity fraud protection services, namely, personal information and financial identity monitoring; fraud resolution assistance, namely, providing advice and consultation in the field of Identity theft, namely, advice and consultation relating to filing of police reports; Identity theft and fraud protection services, namely, internet surveillance of financial and personal information; providing online information in the field of identity theft protection; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; Fraud detection services in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, insurance, loan, and other financial accounts; monitoring the Internet, public records, private and public electronic databases to facilitate the detection of identity theft and fraud; Identity theft protection services, namely, analyzing public and personal information and providing a report assessing risk of identity theft; Providing a web site featuring non-downloadable videos in the field of identity theft protection and identity fraud protection; monitoring consumer credit reports to facilitate the detection of identity theft and fraud; monitoring of computer systems for safety purposes, namely, monitoring personal use of computer of family members for parental supervision purposes and providing reports in support thereof; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on mobile phones, in Class 45.

See TMEP §1402.01.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

An applicant may amend an identification of services 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 et seq.

Descriptions of goods and services should use the common, ordinary name for the goods and/or services. TMEP §1402.01. If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

FINAL Information Requirement – As to Specified Services

The requirement for additional information regarding specified services is now made FINAL for the reasons set forth below. 37 C.F.R. §§2.61(b), 2.64(a); TMEP §§814, 1402.01(e).

This requirement is limited to the following services:

social media monitoring, namely, monitoring personal use of computer, in Class 35.

monitoring of computer systems for safety purposes, namely, monitoring personal use of computer and providing reports in support thereof, in Class 45.

The previous Office action included the following requirement.

The nature of the services in connection with which applicant intends to use its mark is not clear from the present record and additional information is required. An applicant can be required to provide more information if it is necessary for proper examination of the application. 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

Therefore, applicant must submit samples of advertisements or promotional materials for the identified services. If such materials are not available, applicant must submit samples of advertisements or promotional materials for similar services. In addition, applicant must describe in detail the nature, purpose and channels of trade of the services.

The applicant has provided the above information as to most of its services, but the information does not appear to address the services included in this final requirement. Therefore, the applicant must either provide additional information of the type discussed above for these services, or explain in writing where these services are addressed in the materials already in the record.

Failure to respond to a request for information can be grounds for refusing registration. TMEP §814; see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003). Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

ADVISORY – Partial Abandonment

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirements apply will be deleted from the application by Examiner’s Amendment:

social media monitoring, namely, monitoring personal use of computer, in Class 35.

fraud resolution assistance, namely, providing advice and consultation in the field of Identity theft protection; monitoring of computer systems for safety purposes, namely, monitoring personal use of computer and providing reports in support thereof, in Class 45.

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

The application will then proceed for the following goods and services:

Computer software and downloadable computer software for identity theft and fraud protection, in Class 9.

Monitoring consumer credit reports and providing an alert as to any changes therein; credit card registration services; credit card cancellation services for lost or stolen cards; credit card monitoring services for lost or stolen cards; providing assistance in the prevention of unwanted telephone calls, namely, registration on "do not call" telephone lists; Providing consultation in the field of commercial mailing lists, namely, consultation relating to removal from such lists to prevent delivery of junk and unsolicited commercial mail, in Class 35.

Providing online secure electronic storage of digital content, media and images, namely, passwords, PINs, account numbers, medical records and prescriptions, important documents, emergency contact, digital photographs and diaries for others, in Class 39.

Identity theft protection and identity fraud protection services; Identity theft protection and identity fraud protection services, namely, personal information and financial identity monitoring; Identity theft and fraud protection services, namely, internet surveillance of financial and personal information; providing online information in the field of identity theft protection; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; Fraud detection services in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, insurance, loan, and other financial accounts; monitoring the Internet, public records, private and public electronic databases to facilitate the detection of identity theft and fraud; Identity theft protection services, namely, analyzing public and personal information and providing a report assessing risk of identity theft; Providing a web site featuring non-downloadable videos in the field of identity theft protection and identity fraud protection; monitoring consumer credit reports to facilitate the detection of identity theft and fraud; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on mobile phones, in Class 45.

Response Options

Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements;

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.