To: | American National Insurance Company (trademark@boulwarevaloir.com) |
Subject: | U.S. Trademark Application Serial No. 88409135 - AMERICAN NATIONAL INSURANCE - ANINS EAGLE |
Sent: | July 19, 2019 08:12:37 AM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88409135
Mark: AMERICAN NATIONAL INSURANCE
|
|
Correspondence Address: |
|
Applicant: American National Insurance Company
|
|
Reference/Docket No. ANINS EAGLE
Correspondence Email Address: |
|
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 19, 2019
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.
How to respond. Click to file a response to this nonfinal Office action
Search Results
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Delete Claim of Ownership of Pending Application
Applicant should delete the claim of ownership of pending application serial no. 8537011 for the record.
Disclaimer
In this case, applicant must disclaim the wording “INSURANCE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Specifically, applicant is offering insurance services and as such, the wording must be disclaimed.
In support of the disclaimer, the examining attorney submits and relies upon the attached online dictionary definition wherein “insurance” means “the business of insuring persons or property.”
See
http://www.merriam-webster.com/dictionary/insurance
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “INSURANCE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Amended Description of the Mark Required
The following description is suggested, if accurate: The mark consists of an eagle with wings spread in black and white perched on top of the word "American" in red lettering. Underneath the word "American" is the word "National" in blue lettering. Underneath the word "National" is a horizontal black line with the word "Insurance" written in black below the line.
Response
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/EFalk/
Erin M. Falk
erin.falk@uspto.gov
U.S. Patent & Trademark Office
Trademark Examining Attorney, LO101
(571)-272-1110
RESPONSE GUIDANCE