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)

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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. 87915768 ANNIE(Standard Characters, see http://uspto.report/TM/87915768/mark.png) has been amended as follows:

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

Applicant would like to respond to the potential rejection based on U.S. Application Serial No. 86363665 filed by the Veteran’s Administration  which  has a  recently filed statement of STATEMENT OF USE  attached hereto as Exh.  A.  The identification of services for the ‘665 application are:   

 

Class 38 Electronic transmission and reception of messages and data; communication services, namely, electronic transmission and reception of text messages to and from patients in the field of health care; communication services, namely, electronic transmission and reception of messages to and from patients in the field of health care using software on mobile communications devices or portable electronic devices. 

 

Class 44 Medical services; medical advice and medical information services in the field of health care; medical advice and medical information services in the field of health care provided via text messaging; medical advice and medical information services in the field of health care provided via the internet and via wireless mobile and electronic devices; patient health advice services; patient health care services; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; providing information and advice in the health and medical fields

 

In contrast the Applicant’s services are directed only to property and casualty services and do not cover any health or  medical  services.  The proposed specimen for the '665 application (Exh. A) is directed to the medical team assisting veterans.   The VA’s services are  for use by the medical profession to interact with patients.  Applicant’s services relate to a totally different services sector providing a mechanism for any  consumer to interact regarding property and casualty insurance.    Insurance related services  for cars and homes would not be associated with an app for medical information and patient information.  The channels of trade are very different, and in fact , the Applicant does not offer services in Class 44, nor is it capable of providing medical services.   

 

Applicant requests consideration of the arguments above especially in consideration of the illustrative specimen provided by the VA.

EVIDENCE
Evidence in the nature of Exhibit A - U.S. Application Serial No. 86363665 Statement of Use. has been attached.
Original PDF file:
evi_21620125078-20190225113346191020_._ANNIE_Appl._No._86363665_Statement_of_Use.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance services, namely, providing information and on-line computer databases for property and casualty insurance and life 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: Insurance services, namely, providing information and on-line computer databases for property and casualty insurance and life insurance; Insurance services, namely, providing information and on-line searchable computer databases in the field of property and casualty insurance and life insurance; providing information in the fields of property and casualty insurance and life insurance via telephoneClass 036 for Insurance services, namely, providing information and on-line searchable computer databases in the field of property and casualty insurance and life insurance; providing information in the fields of property and casualty insurance and life insurance via telephone
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 038 for 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
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: Telecommunications services, namely, telephone communications in the fields of property and casualty insurance and life insurance; telecommunications services, namely, telephone communication services provided to the property and casualty insurance and life insurance industries; cellular messaging and notification services for information on insurance issues related to emergencies, natural disasters and insurance claimsClass 038 for telecommunications services, namely, telephone communication services provided to the property and casualty insurance and life insurance industries
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 041 for Providing on-line educational services in fields of property and casualty insurance and life 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: Providing on-line educational services in fields of property and casualty insurance and life insurance; Providing on-line educational services , namely on-line educational guides and interactive chat instructional services for in fields of property and casualty insurance and life insuranceClass 041 for Providing on-line educational services , namely on-line educational guides and interactive chat instructional services for in fields of property and casualty insurance and life 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: /margaret a. boulware/     Date: 02/25/2019
Signatory's Name: Margaret A. Boulware
Signatory's Position: Attorney of record, member State Bar of Texas

Signatory's Phone Number: 832-369-7850

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: 87915768
Internet Transmission Date: Tue Feb 26 10:32:09 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201902261032093
54085-87915768-620948130f3760e7539964c9d
6ef4e9e0ad4e5ce039fc7fb9d9918c496e7b2a7-
N/A-N/A-20190225113346191020