To: | Osprey Underwriters Inc. (torourke@bodnerorourke.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87109009 - OSPREY - N/A |
Sent: | 10/31/2016 3:26:55 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87109009
MARK: OSPREY
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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: Osprey Underwriters Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 10/31/2016
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF SERVICES REQUIREMENT
The wording “risk management” in the identification of services must be clarified because the type of risk management services is required to make these services definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Further, the wording “underwriting multiple lines of insurance, namely, automotive, transportation and commercial automobile, farm/ranch, homeowners and property insurance, recreational vehicle, boat sales and service, motorcycle, liability umbrella, construction and service trades, healthcare and social service, workers compensation insurance, real estate development and management, small and retail business, hospitality, food service and restaurants, manufacturing and distribution, professional and technical service, remediation, environmental remediation and pollution and waste management reinsurance” in the identification of services must be clarified because the specific type and field of underwriting insurance services is required to make these services definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Lastly, the wording “online journals, namely, blogs featuring insurance products and services, insurance related articles, newsletter journal, insurance related news, multimedia presentations” is indefinite and must be specified to ensure that the services are properly classified. As such, the wording “online journals, namely, blogs featuring insurance products and services, insurance related articles, newsletter journal” and “multimedia presentations” have been classified in International Class 36. However, the proper classification for these items is International Class 41.
Additionally, applicant has provided the application fee(s) for only 1 international class(es). Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may adopt the following identification, if accurate:
Class 36: Insurance administration; insurance information; insurance consultation; financial risk management; insurance services, namely, underwriting multiple lines of insurance in the fields of {specify field, e.g., automobiles, transportation and commercial automobile, farm and ranch, homeowners and property, recreational vehicles, boats, motorcycles, liability umbrella, construction, healthcare and social service, workers compensation, real estate, small and retail business, hospitality, food service and restaurants, manufacturing and distribution, professional and technical services, waste remediation, environmental remediation and pollution and waste management reinsurance}; Providing on-line news in the field of insurance
Class 41: online journals, namely, blogs featuring insurance products and services; providing on-line non-downloadable articles in the field of insurance; providing on-line newsletters in the field of insurance; Entertainment services, namely, providing a web site featuring photographic, audio, video and prose multimedia presentations featuring {indicate subject matter of presentations, e.g., insurance information}
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. See TMEP §1402.04.
Applicant must address the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the 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 services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 36 only.
Examples of specimens for services 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) 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.
RESPONSE GUIDELINES
/Elizabeth Shen/
Trademark Examining Attorney
Law Office 121
571-270-7111
elizabeth.shen@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.