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. 88266014 RISK TOOLWORKS(Standard Characters, see http://uspto.report/TM/88266014/mark.png) has been amended as follows:

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, property and casualty insurance underwriting, risk control and loss prevention services, and providing information and an internet website portal 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: Insurance services, namely, property and casualty insurance underwriting, risk control and loss prevention services, and providing information and an internet website portal in the field of insurance; Insurance services, namely, property and casualty insurance underwriting, insurance risk control services and insurance loss prevention services, providing information in the field of insurance and loss control, and an internet website portal for agents and customers featuring loss control information, resources, guides, checklists, self-assessments, and account administration to assist in understanding, assessing, addressing and managing risk exposures in the field of insurance.Class 036 for Insurance services, namely, property and casualty insurance underwriting, insurance risk control services and insurance loss prevention services, providing information in the field of insurance and loss control, and an internet website portal for agents and customers featuring loss control information, resources, guides, checklists, self-assessments, and account administration to assist in understanding, assessing, addressing and managing risk exposures in the field of 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing online education, training and information in the field of insurance, risk control and loss prevention
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 online education, training and information in the field of insurance, risk control and loss prevention; Providing online education in the nature of web-based training programs, non-downloadable videos and webcasts in the field of insurance, risk control and loss prevention.Class 041 for Providing online education in the nature of web-based training programs, non-downloadable videos and webcasts in the field of insurance, risk control and loss prevention.
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.

The applicant's current attorney information: Robin R. Fuller. Robin R. Fuller of THE TRAVELERS COMPANIES, INC., is located at

      MAIL CODE 9275-LC12L
      385 WASHINGTON STREET
      ST. PAUL, Minnesota 55102
      US

The phone number is 651-310-4978.

The fax number is 651-310-5539.

The email address is trademarks@travelers.com

The applicants proposed attorney information: Robin R. Fuller. Robin R. Fuller of THE TRAVELERS COMPANIES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      MAIL CODE 9275-LC12L
      385 WASHINGTON STREET
      ST. PAUL, Minnesota 55102
      United States

The phone number is 651-310-4978.

The fax number is 651-310-5539.

The email address is trademarks@travelers.com

Robin R. Fuller submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ROBIN R. FULLER. ROBIN R. FULLER of THE TRAVELERS COMPANIES, INC., is located at

      MAIL CODE 9275-LC12L
      385 WASHINGTON STREET
      ST. PAUL, Minnesota 55102
      US

The phone number is 651-310-4978.

The fax number is 651-310-5539.

The email address is trademarks@travelers.com; docketing@cpaglobal.com

The applicants proposed correspondence information: Robin R. Fuller. Robin R. Fuller of THE TRAVELERS COMPANIES, INC., is located at

      MAIL CODE 9275-LC12L
      385 WASHINGTON STREET
      ST. PAUL, Minnesota 55102
      United States

The phone number is 651-310-4978.

The fax number is 651-310-5539.

The email address is trademarks@travelers.com; docketing@cpaglobal.com

SIGNATURE(S)
Response Signature
Signature: /rrf/     Date: 09/20/2019
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 a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ROBIN R. FULLER
   THE TRAVELERS COMPANIES, INC.
   MAIL CODE 9275-LC12L
   385 WASHINGTON STREET
   ST. PAUL, Minnesota 55102
Mailing Address:    Robin R. Fuller
   THE TRAVELERS COMPANIES, INC.
   MAIL CODE 9275-LC12L
   385 WASHINGTON STREET
   ST. PAUL, Minnesota 55102
        
Serial Number: 88266014
Internet Transmission Date: Fri Sep 20 10:48:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019092010483427
9313-88266014-61044e386769982bd101ef396b
39118933ca7eb79ceb2e4aa6720dade31d9df906
e-N/A-N/A-20190919182141611183