To: | The Travelers Indemnity Company (trademarks@travelers.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86337731 - RISK MANAGEMENT ON-DEMAND - N/A |
Sent: | 11/5/2014 3:17:28 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86337731
MARK: RISK MANAGEMENT ON-DEMAND
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: The Travelers Indemnity Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 11/5/2014
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On October 31, 2014, the trademark examining attorney and Robin R. Fuller discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Section 2(e)(1) Refusal—Mark Is Merely Descriptive
In this case, applicant has applied to register the mark RISK MANAGEMENT ON-DEMAND for use in connection with “Insurance services, namely, providing risk management consultation services.” Both the individual components of the mark and the composite result are descriptive of applicant’s services. Specifically, “RISK MANAGEMENT” names the subject matter of subject matter of the consulting services as stated in the identification.
Additionally, the wording “ON-DEMAND” is defined as “[w]hen needed or asked for.” See attached definition from http://dictionary.reference.com/browse/on+demand. The attached pages from applicant’s website show that applicant’s risk control consultation services will provided when the client asks for them. According to the website, one of main benefits of the services are that they are “prompt” and that “[a] consultant can meet with you right away or schedule a time that works with your schedule.” See http://rccustomers.travelers.com/riskcontrol/rcpublicdocs.nsf/0/B52B4B3D7B0323B985257C4600524790/$FILE/A0570_RiskControlOnDemand.pdf (assessed November 5, 2014). Thus, “ON-DEMAND” describes this feature of the services.
Furthermore, the entire mark is merely descriptive because the combination of the terms “RISK MANAGEMENT” and “ON-DEMAND” does not create an incongruous or otherwise non-descriptive mark; rather, the composite mark directly describes risk management services that are provided when asked for. For instance, the attached article from Insurance Journal describes the applicant’s services as “an interactive, on demand service for property and casualty insureds looking to manage and mitigate their business risks.” See attachment from http://www.insurancejournal.com/news/national/2013/05/15/292047.htm (emphasis added). Furthermore, the applicant’s own marketing materials on YouTube describe the services as “on-demand consulting services.” http://www.youtube.com/watch?v=XDZqO4RVTYM (emphasis added).
Accordingly, registration is refused on the Principal Register under Section 2(e)(1) because the mark merely describes features of the services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Supplemental Register (Advisory)
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Disclaimer of Generic Matter Will Be Required (Advisory)
Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “RISK MANAGEMENT” because such wording appears to be generic in the context of applicant’s goods and/or services. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).
The following is the standardized format for a disclaimer:
No claim is made to the exclusive right to use “RISK MANAGEMENT” apart from the mark as shown.
TMEP §1213.08(a)(i).
Requirement for Additional Information
Due to the descriptive nature of the applied-for mark, applicant must provide the following information regarding the goods and/or services and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.
If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(2) Applicant must explain (a) whether its risk management consultation services are provided when asked for by the customer; and (b) whether the services are provide on demand.
See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
Identification of Services Requirement
In particular, the identification could include consultation regarding business risk management, which is in International Class 35, and consultation regarding financial risk management or loss control management, both of which are in International Class 36. Therefore, applicant must clarify the nature of the services and classify them accordingly.
The proposed wording in International Class 35 is acceptable as written.
Applicant may substitute the following wording, if accurate:
International Class 35: Providing business risk management consultation services
International Class 36: Insurance services, namely, providing risk management consultation services in the nature of loss control management consultation services; Providing financial risk management consultation services
For assistance with identifying and classifying goods and 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.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
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.
/April A. Hesik/
Trademark Examining Attorney
Law Office 113
(571) 272-4735
april.hesik@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.