Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85589914 RECOVER (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85589914) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Monitoring consumer credit reports; Monitoring consumer credit reports and providing an alert as to any changes therein; Providing credit reporting data maintained by others; credit card registration services; credit card cancellation services for lost or stolen cards; credit card monitoring services for lost or stolen cards; credit management services, namely, assistance with restoring credit damaged by identity theft; 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, social media and mobile phone activity of family members for reporting and parental supervision purposes; Assisting in the locating of children for security and safety purposes using a global positioning system; Providing monitoring of pictures posted on social media and online; Providing online dashboard that allows parents to monitor social media and mobile phone activity of family members; Providing translations of mobile phone text message lingo and slang terms using online and on mobile phones; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on social media and mobile phone
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Monitoring consumer credit reports; Monitoring consumer credit reports and providing an alert as to any changes therein; credit card registration services; Providing credit reporting data maintained by others; 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; credit management services, namely, assistance with restoring credit damaged by identity theft; social media monitoring, namely, monitoring personal use of computer, social media and mobile phone activity of family members for reporting and parental supervision purposes; Assisting in the locating of children for security and safety purposes using a global positioning system; Providing monitoring of pictures posted on social media and online; Providing online dashboard that allows parents to monitor social media and mobile phone activity of family members; Providing translations of mobile phone text message lingo and slang terms using online and on mobile phones; Providing alerts regarding inappropriate, dangerous or suspicious behaviors on social media and mobile phoneClass 035 for 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Providing identity theft insurance underwritten by others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: 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 theftClass 036 for 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Providing online secure electronic storage and retrieval 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Providing online secure electronic storage and retrieval 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; 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 othersClass 039 for 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for 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; Identity theft and fraud protection services, namely, internet surveillance of financial and personal information; providing online resources in the field of identity theft protection; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; Fraud detection and prevention 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 and prevention 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 consultation in the field of prevention of unsolicited commercial mail and removal from junk mail lists; Providing a web site featuring non-downloadable videos in the field of identity theft protection and identity fraud protection
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: 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; 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 resources in the field of identity theft protection; 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 and prevention 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; 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 and prevention of identity theft and fraud; 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 consultation in the field of prevention of unsolicited commercial mail and removal from junk mail lists; 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 phonesClass 045 for 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use RECOVER in connection with services in Classes 35, 36, and 45 apart from the mark as shown.


Miscellaneous Statement
The Examining Attorney has requested information with respect to certain goods and services listed in the application. Applicant has deleted some of the services identified by the Examining Attorney in this request, and for the remaining services, Applicant has attached promotional material from Applicant's websites for reference.

Original PDF file:
mis-208200215136-164814949_._Monitor__protect__recover_rfi.pdf
Converted PDF file(s) ( 7 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_208200215136-164814949_._Recover_declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Steve Schwartz
Signatory's Position: President, Partner Services

Response Signature
Signature: /Jacqueline Levasseur Patt/     Date: 01/24/2013
Signatory's Name: Jacqueline Levasseur Patt
Signatory's Position: Attorney of Record, DC/MD bar member

Signatory's Phone Number: 202-344-4000

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85589914
Internet Transmission Date: Thu Jan 24 16:59:45 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20130124165945
747752-85589914-490eb7b3926aaecff5d8b884
6436ded2ec-N/A-N/A-20130124164814949847