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:

The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Summary of Issues Applicant Must Address

Specimen Refusal

Specimen Refusal– As to Classes 9 and 39 ONLY

Applicant was issued a notice of allowance for the mark RECOVER and design for:

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 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 advice and consultation in the field of identity theft regarding credit restoration, credit card fraud reimbursement, and credit card replacement services, in Class 36.

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; 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; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on mobile phones, in Class 45.

In support of the statement of use, applicant has submitted specimens described as “pages from website.” As described, the specimen consists of printouts from the applicant’s website. The applied-for mark is displayed within the content of some of these pages and based on this placement is only associated with some of the applicant’s services, specifically, the services that apply once identity theft has occurred. Specifically, the website associates the mark with information about cancellation of credit cards, insurance, and filing police reports. Thus, the specimens are acceptable to show use of the mark for the applicant’s services in Classes 35, 36, and 45.

As a result, registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and services specified in International Classes 9 and 39. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the statement of use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).

Examples of specimens for downloadable software may include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may also be acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.

Examples of specimens for services may include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §§1301.04 et seq.

Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and services identified in International Classes 9 and 39.

For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

ADVISORY – Insurance Extension

A statement of use cannot be withdrawn. 37 C.F.R. §2.88(g); In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993); TMEP §§1109.02, 1109.17. However, on or after the date of filing a statement of use, an applicant may file one final request for an extension of time to file a statement of use (an “insurance” extension request) if (1) there is time remaining in the six-month period in which the statement of use was filed, and (2) granting the extension request would not extend the time for filing a statement of use more than thirty-six months from the date of issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1); TMEP §1108.03.

An insurance extension request, if granted, would allow an applicant additional time to cure deficiencies with the already-filed statement of use that must be corrected before the expiration of the deadline for filing a statement of use. See TMEP §§1108.03. Such deficiencies include providing a proper specimen showing valid use in commerce before expiration of the time for filing the statement of use. See 1109.16(a). However, a granted insurance extension request does not permit an applicant to file another statement of use or further extension requests. See TMEP §§1108.03, 1109.17.

Should applicant file a timely “insurance” extension request, applicant would have until August 20, 2014, or 12 months from the date of issuance of the notice of allowance, to cure any deficiencies with the statement of use.

If applicant files such an extension request, the response deadline to this Office action will remain unchanged. TMEP §1109.16(d). A proper response must be received by the Office within six months from the date of issuance of this Office action to avoid abandonment of the application. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1109.16(d).

ADVISORY – Partial Abandonment

If applicant does not respond to this Office action within the six-month period for response, International Classes 9 and 39 will be deleted from the application. The application will then proceed with International Classes 35, 36, and 45 only. See 37 C.F.R. §2.65(a); TMEP §718.02(a).

Response Guidelines

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

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.