Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87701257 |
LAW OFFICE ASSIGNED |
LAW OFFICE 120 |
MARK SECTION |
MARK |
http://uspto.report/TM/87701257/mark.png |
LITERAL ELEMENT |
TRAVERSE |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
The Examiner has refused registration of the applied-for mark because of a likelihood of confusion with the mark in U.S.
Registration No. 3260812. Applicant advises the Examiner that it filed a Petition for Cancellation against the cited registration on July 24, 2018 (Number 92069016) (see attached). A notice of
default was entered on September 12, 2018 and respondent has 30 days to show cause. Applicant requests that this application be suspended pending the outcome of the cancellation action. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_1702021221-20180919111908374570_._Petition_for_Cancellation_ttabvue-92069016.pdf |
CONVERTED PDF FILE(S)
(18 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0002.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0003.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0004.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0005.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0006.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0007.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0008.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0009.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0010.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0011.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0012.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0013.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0014.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0015.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0016.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0017.JPG |
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\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0018.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\877\012\87701257\xml4\ROA0019.JPG |
DESCRIPTION OF EVIDENCE FILE |
a Petition for Cancellation |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Mobile application in the field of insurance |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Mobile application in the field of insurance; Downloadable mobile
application in the field of insurance that quotes and issues insurance, processes policy changes, hosts policyholder policy forms, processes payments, and provides claim reporting, claim management,
account management, receipts or photo upload, and online chat capability. |
FINAL DESCRIPTION |
Downloadable mobile application in the field of insurance that quotes and issues insurance, processes policy changes, hosts
policyholder policy forms, processes payments, and provides claim reporting, claim management, account management, receipts or photo upload, and online chat capability. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (036)(current) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
providing property, casualty, surety, inland marine and travel insurance; Property, casualty, surety, inland marine and travel
insurance underwriting; insurance claims services and administration; insurance claims processing; insurance claims adjusting; insurance appraisals; insurance subrogation and salvage; insurance
brokerage; insurance actuarial services; risk control and loss prevention consultation and services; providing information and advisory services relating to insurance matters |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (036)(proposed) |
INTERNATIONAL CLASS |
036 |
TRACKED TEXT DESCRIPTION |
providing property, casualty, surety, inland marine and travel insurance; Property,
casualty, surety, inland marine and travel insurance underwriting; insurance claims services and administration; insurance claims administration; insurance claims processing; insurance claims adjusting; insurance appraisals; insurance appraisals of personal property for underwriting and claims; insurance subrogation and
salvage; insurance brokerage; insurance actuarial services; risk control and loss prevention consultation and
services; providing information and advisory services relating to insurance matters |
FINAL DESCRIPTION |
providing property, casualty, surety, inland marine and travel insurance; Property, casualty, surety, inland marine and travel
insurance underwriting; insurance claims administration; insurance claims processing; insurance claims adjusting; insurance appraisals of personal property for underwriting and claims; insurance
subrogation and salvage; insurance brokerage; insurance actuarial services; risk control and loss prevention consultation and services; providing information and advisory services relating to
insurance matters |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Online, non-downloadable software in the field of insurance; an interactive website for quoting, binding and issuing insurance,
insurance claim reporting and services, and managing accounts in the field of property, casualty, surety, inland marine and travel insurance; application service provider featuring application
programming interface (API) software |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Online, non-downloadable software in the field of insurance; Providing online, non-downloadable software in the field of insurance that quotes, binds and issues insurance, processes policy changes, hosts policyholder policy forms, processes payments, and
provides claim reporting, claim management, account management, receipts or photo upload, and online chat capability; an interactive website for quoting,
binding and issuing insurance, insurance claim reporting and services, and managing accounts in the field of property, casualty, surety, inland marine and travel insurance; providing an interactive website featuring technology that allows users to obtain insurance quotes and insurance, insurance claim reporting and services and manage accounts in the field
of property, casualty, surety, inland marine and travel insurance; application service provider featuring application programming interface (API)
software; application service provider featuring application programming interface (API) software for quoting, binding and issuing insurance. |
FINAL DESCRIPTION |
Providing online, non-downloadable software in the field of insurance that quotes, binds and issues insurance, processes policy
changes, hosts policyholder policy forms, processes payments, and provides claim reporting, claim management, account management, receipts or photo upload, and online chat capability; providing an
interactive website featuring technology that allows users to obtain insurance quotes and insurance, insurance claim reporting and services and manage accounts in the field of property, casualty,
surety, inland marine and travel insurance; application service provider featuring application programming interface (API) software for quoting, binding and issuing insurance. |
FILING BASIS |
Section 1(b) |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/rrf/ |
SIGNATORY'S NAME |
Robin R. Fuller |
SIGNATORY'S POSITION |
Senior Counsel |
SIGNATORY'S PHONE NUMBER |
651-310-4978 |
DATE SIGNED |
09/19/2018 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Sep 19 15:21:42 EDT 2018 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.X-2
0180919152142557866-87701
257-610b230c71a117d7f717d
1f6a17eedb52f68d428bf64fc
6869534127cadc765d-N/A-N/
A-20180919120051797215 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
87701257 TRAVERSE(Standard Characters, see http://uspto.report/TM/87701257/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examiner has refused registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 3260812. Applicant advises the Examiner
that it filed a Petition for Cancellation against the cited registration on July 24, 2018 (Number 92069016) (see attached). A notice of default was entered on September 12, 2018 and respondent
has 30 days to show cause. Applicant requests that this application be suspended pending the outcome of the cancellation action.
EVIDENCE
Evidence in the nature of a Petition for Cancellation has been attached.
Original PDF file:
evi_1702021221-20180919111908374570_._Petition_for_Cancellation_ttabvue-92069016.pdf
Converted PDF file(s) ( 18 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Mobile application in the field of insurance
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: Mobile application in the field of insurance;
Downloadable mobile application in the field of
insurance that quotes and issues insurance, processes policy changes, hosts policyholder policy forms, processes payments, and provides claim reporting, claim management, account management, receipts
or photo upload, and online chat capability.Class 009 for Downloadable mobile application in the field of insurance that quotes and issues insurance, processes policy changes, hosts
policyholder policy forms, processes payments, and provides claim reporting, claim management, account management, receipts or photo upload, and online chat capability.
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 property, casualty, surety, inland marine and travel insurance; Property, casualty, surety, inland marine and travel insurance underwriting; insurance claims
services and administration; insurance claims processing; insurance claims adjusting; insurance appraisals; insurance subrogation and salvage; insurance brokerage; insurance actuarial services; risk
control and loss prevention consultation and services; providing information and advisory services relating to insurance matters
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 property, casualty, surety, inland marine and travel insurance;
Property, casualty, surety, inland marine and
travel insurance underwriting;
insurance claims services and administration;
insurance claims administration;
insurance claims processing;
insurance claims adjusting;
insurance appraisals;
insurance appraisals of personal property for underwriting and claims;
insurance subrogation and salvage;
insurance brokerage;
insurance actuarial services;
risk control and loss prevention consultation and services;
providing information and advisory
services relating to insurance mattersClass 036 for providing property, casualty, surety, inland marine and travel insurance; Property, casualty, surety, inland marine and travel insurance
underwriting; insurance claims administration; insurance claims processing; insurance claims adjusting; insurance appraisals of personal property for underwriting and claims; insurance subrogation
and salvage; insurance brokerage; insurance actuarial services; risk control and loss prevention consultation and services; providing information and advisory services relating to insurance
matters
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 042 for Online, non-downloadable software in the field of insurance; an interactive website for quoting, binding and issuing insurance, insurance claim reporting and services,
and managing accounts in the field of property, casualty, surety, inland marine and travel insurance; application service provider featuring application programming interface (API) software
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: Online, non-downloadable software in the field of insurance;
Providing online, non-downloadable
software in the field of insurance that quotes, binds and issues insurance, processes policy changes, hosts policyholder policy forms, processes payments, and provides claim reporting, claim
management, account management, receipts or photo upload, and online chat capability;
an interactive website for quoting, binding and issuing insurance,
insurance claim reporting and services, and managing accounts in the field of property, casualty, surety, inland marine and travel insurance;
providing an
interactive website featuring technology that allows users to obtain insurance quotes and insurance, insurance claim reporting and services and manage accounts in the field of property, casualty,
surety, inland marine and travel insurance;
application service provider featuring application programming interface (API) software;
application service provider featuring application programming interface (API) software for quoting, binding and issuing insurance.Class 042 for Providing online, non-downloadable
software in the field of insurance that quotes, binds and issues insurance, processes policy changes, hosts policyholder policy forms, processes payments, and provides claim reporting, claim
management, account management, receipts or photo upload, and online chat capability; providing an interactive website featuring technology that allows users to obtain insurance quotes and insurance,
insurance claim reporting and services and manage accounts in the field of property, casualty, surety, inland marine and travel insurance; application service provider featuring application
programming interface (API) software for quoting, binding and issuing insurance.
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.
SIGNATURE(S)
Response Signature
Signature: /rrf/ Date: 09/19/2018
Signatory's Name: Robin R. Fuller
Signatory's Position: Senior Counsel
Signatory's Phone Number: 651-310-4978
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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87701257
Internet Transmission Date: Wed Sep 19 15:21:42 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2018091915214255
7866-87701257-610b230c71a117d7f717d1f6a1
7eedb52f68d428bf64fc6869534127cadc765d-N
/A-N/A-20180919120051797215