NOTE TO THE FILE
SERIAL NUMBER: 88004406
DATE: 10/12/2018
NAME: skeating
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Ted Remaklus [mailto:tremaklus@whe-law.com]
Sent: Friday, October 12, 2018 11:01 AM
To: Keating, Shannon <Shannon.Keating@USPTO.GOV>
Cc: usptodock <usptodock@whe-law.com>; Brenda Drambarean <bdrambarean@whe-law.com>
Subject: RE: URGENT RESPONSE REQUESTED: U.S. Trademark Application Serial Nos. 88004406; 88004416; and 88004454
Dear Shannon:
The applicant would like to amend the description of the service in all three applications to:
Class 36 - Insurance services, namely, underwriting, issuance, and administration of property and casualty insurance, life insurance and health insurance; insurance underwriting services for all types of insurance
The applicant is also agreeable to entry of a disclaimer of "Insurance" from Application No. 88004416 apart from the mark as a whole.
Please let me know if you are able to make these changes by way of examiners amendments.
If you need anything further, please let me know.
Sincerely, Ted
Theodore R. Remaklus (Mr.)
Partner
Wood Herron & Evans LLP
2700 Carew Tower | 441 Vine Street | Cincinnati, Ohio 45202, U.S.A.
P: 513-241-2324 | F: 513-241-6234 | M: 513-289-9956
From: Keating, Shannon [mailto:Shannon.Keating@USPTO.GOV]
Sent: Thursday, October 11, 2018 3:26 PM
To: Ted Remaklus <tremaklus@whe-law.com>
Cc: usptodock <usptodock@whe-law.com>; Brenda Drambarean <bdrambarean@whe-law.com>
Subject: URGENT RESPONSE REQUESTED: U.S. Trademark Application Serial Nos. 88004406; 88004416; and 88004454
Importance: High
Dear Mr. Remaklus,
I am reviewing the above referenced application for your client, Northbridge Financial Corporation (attorney docket nos. TORYS-31-122; TORYS-32-122; and TORYS-33-122). In review of these applications, there are two issues that can be corrected without the need for an office action.
First, we require an amended identification of the services identified in International Class 36 for Serial Nos. 88004406; 88004416; and 88004454 (attorney docket nos. TORYS-31-122; TORYS-32-122; and TORYS-33-122). Specifically, the suggested identification would read, with suggested changes in bold:
International Class 036: Insurance services, namely, underwriting, issuance, and administration of {specify field, e.g., life, health, accident, fire} insurance; insurance underwriting services for {specify field, e.g., life; all types of insurance}
Please let me know if you would approve of my amending the identification as described for Serial Nos. 88004406; 88004416; and 88004454 (attorney docket nos. TORYS-31-122; TORYS-32-122; and TORYS-33-122).
Second, we require a disclaimer of the word “INSURANCE” in the mark for Serial No. 88004416 (attorney docket no. TORYS-32-122) because it is unregistrable matter. The suggested disclaimer would read:
“No claim is made to the exclusive right to use “INSURANCE” apart from the mark as shown.”
Please let me know if you would approve of my adding the disclaimer as described. Please note, a disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.
In summary, we require the following approvals from you:
1) Amended Identification of Services as described above for Serial Nos. 88004406; 88004416; and 88004454 (attorney docket nos. TORYS-31-122; TORYS-32-122; and TORYS-33-122).
2) Disclaimer as described above for Serial No. 88004416 (attorney docket no. TORYS-32-122)
Please respond no later than 2 PM EST on Monday, October 15, 2018.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
Shannon
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
/Shannon B. Keating/
Trademark Examining Attorney
Law Office 126
JEF6A40
United States Patent & Trademark Office
(571) 270-3734