UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 9/1/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

1.)     IDENTIFICATIONS OF SERVICES FOR INTERNATIONAL CLASSES 36, 38 AND 41 REQUIRE AMENDMENT

 

1.  INTERNATIONAL CLASS 36

 

The Class 36 identification of services presently reads as follows:  “Insurance services, namely, providing information and on-line computer databases for property and casualty insurance and life insurance”.

 

The identification of services is unacceptable for the following reasons:

 

The identification of services is indefinite and must be clarified because, as worded, the exact nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to describe or explain the nature of the online computer database services, as well as clarify the language used to describe the field or subject matter of the information services.  Applicant must take care to describe the services in detail, using clear and succinct language.  See id.  Applicant may adopt the following Class 36 identification of services, if accurate: 

 

“Insurance services, namely, providing information and on-line searchable computer databases in the field of property and casualty insurance and life insurance”.

                                                                                                           

 

2.  INTERNATIONAL CLASS 38

 

The Class 38 identification of services presently reads as follows:  “Telecommunications services, namely, telephone communications in the fields of property and casualty insurance and life insurance; cellular messaging and notification services for information on insurance issues related to emergencies, natural disasters and insurance claims”.

 

The identification of services is unacceptable for the following reasons:

 

The wording “Telecommunications services, namely, telephone communications in the fields of property and casualty insurance and life insurance” in the Class 38 identification of services is indefinite and must be clarified because it does not appear to actually identify a “telecommunication” service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  International Class 38 telecommunications services involve the activities of allowing at least one person to communicate with another by a sensory means.  That is, the provider of the service provides the actual means for facilitating the communication, and not the information communicated.  This portion of the Class 38 identification of services is worded in such a way that it calls into question whether the service is actually the Class 38 provision of the means to communicate by telephone, or whether it involves the provision of information via telephone.  Applicant must amend this wording to more clearly set forth and accurately describe the nature of the services.  Applicant may substitute either example of wording/classification, if accurate:  

 

“telecommunications services, namely, telephone communication services provided to the property and casualty insurance and life insurance industries” in International Class 38; and/or

 

“providing information in the fields of property and casualty insurance and life insurance via telephone” in International Class 36.

 

The wording “cellular messaging and notification services for information on insurance issues related to emergencies, natural disasters and insurance claims” in the Class 38 identification of services is indefinite and must be clarified because, as explained above, it too does not appear to actually identify a “telecommunication” service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Class 38 cellular messaging and notification-type services entail the actual transmission of such messages and notifications, not the mere provision of the information contained therein.  This portion of the Class 38 identification of services is worded in such a way that it calls into question whether the service is actually the Class 38 provision of the means of transmitting cellular messages and notifications, or whether applicant is rather just providing the information via cellular messages and notifications.  Applicant must amend this wording to more clearly set forth and accurately describe the nature of the services.  Applicant may substitute the following wording/classification, if accurate: 

 

“providing information on insurance issues related to emergencies, natural disasters and insurance claims by means of cellular text messaging and notifications” in International Class 36.

 

 

3.  INTERNATIONAL CLASS 41

 

The Class 41 identification of services presently reads as follows:  “Providing on-line educational services in fields of property and casualty insurance and life insurance”.

 

The identification of services is unacceptable for the following reasons:

 

The Class 41 identification of services is indefinite and must be clarified because the exact form of the educational activity is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to indicate the form of the online educational activity, e.g., providing online classes, seminars or workshops.  Applicant may substitute the following wording, if accurate:  

 

“Providing on-line educational services, namely, [SPECIFY mode of instruction, e.g., online classes, seminars, workshops, training] in fields of property and casualty insurance and life insurance”.

 

 

IN GENERAL:

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

 

2.)     SEARCH RESULTS – PRIOR-FILED CONFLICTING APPLICATION FOUND

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 86363665 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

 

RESPONSE GUIDELINES

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Martha Santomartino/

Trademark Examining Attorney

U.S. Patent and Trademark Office, Law Office 112

Martha.Santomartino@USPTO.gov

(571) 272-9416

 

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/1/2018 FOR U.S. APPLICATION SERIAL NO. 87915768

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 9/1/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.