Response to Office Action

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)

---

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. 87818291 TRAVERSE POWERED BY TRAVELERS (Stylized and/or with Design, see http://uspto.report/TM/87818291/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney 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 Examining Attorney that it filed a Petition for Cancellation against the cited registration on July 24, 2018 (Number 92069016).  The Petition to Cancel has been granted and the cited registration was cancelled on November 8, 2018 and no longer presents a bar to registration of the proposed mark (see attached Exhibit A). In view of the foregoing, Applicant respectfully requests that the refusal be withdrawn and submits that the application is now in condition for allowance and publication for purposes of opposition. Such publication is respectfully requested.

EVIDENCE
Evidence in the nature of Exhibit A has been attached.
Original PDF file:
evi_1702021222-20181114153053295187_._Exhibit_A_-_Traverse_Response.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

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 on-line 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 on-line 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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a hexagon with a partially covered outline of a heart in the center. To the right of the hexagon appears the stylized wording "traverse" in lower case, with the stylized wording "POWERED BY TRAVELERS" in all caps followed by an umbrella design displayed underneath the right half of the word "traverse".

Miscellaneous Statement
Applicant filed prior related applications (serial numbers 87/701,257, 87/818,270, 87/818,189) and respectfully requests that the identification of goods and services and the description of the mark be consistent between the related prior filed marks and applied-for mark. Applicant amended the identification of goods and services and description of the mark as requested by the Examining Attorney in office actions issued in the related prior filed applications, which amendments have now been accepted (see Exhibit B). Applicant is amending the identification of goods and services for the applied-for mark to be consistent with the amendments made at the request of the Examining Attorney in the related prior filed applications. Applicant has amended the description of the mark as requested by the Examining Attorney except that Applicant believes the term "hexagon" is sufficient for purposes of describing the mark as it fits squarely in the common dictionary definition of a shape with six straight sides and six angles (see Exhibit C) and has been accepted in the prior filed applications for the same design mark.

Original PDF file:
mis-1702021222-20181114153053295187_._Exhibit_B_-_Traverse_Response.pdf
Converted PDF file(s) ( 7 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Original PDF file:
mis-1702021222-20181114153053295187_._Exhibit_C_-_Traverse_Response.pdf
Converted PDF file(s) ( 9 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9

SIGNATURE(S)
Response Signature
Signature: /rrf/     Date: 11/14/2018
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: 87818291
Internet Transmission Date: Wed Nov 14 17:08:15 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2018111417081564
7279-87818291-610e2acf0f1a1626f9f26ad29d
5742417f194ad97be4a2cbc8bd79832b8845d2c2
-N/A-N/A-20181114154348060968