Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 23, 2019

 

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.

 

SUMMARY OF ISSUES:

• Disclaimer
• Recitation of Services
• Prior Pending Application

 

Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PRO” because it is not inherently distinctive.  This unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s 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). 

 

The word PRO is an abbreviation for “professional.” The word “professional” is defined as “Of, relating to, engaged in, or suitable for a profession: lawyers, doctors, and other professional people.  The examining attorney encloses evidence from the American Heritage Dictionary showing the meaning the word PRO.

 

The applicant offers pro or professional services in the nature of “Business risk management services in the field of insurance; business data analysis; business data analysis in the field of insurance, underwriting, and risk management; preparation of business reports in the field of insurance, underwriting, and risk management” and all manner of insurance services for professional people. The word PRO describes the intended audience or recipient of the applicant’s business risk management and insurance liability services. In addition, the applicant provides professional liability insurance.

 

In other the words, the applicant provides insurance and business services to professional people or insurance that would be categorized as professional liability insurance. Therefore, the word PRO should be disclaimed.  

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PRO” 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. 

 

Recitation of Services

 

The recitation of services in International Class 35 is acceptable.

 

The wording “or other specialty lines coverage” “insurance policy systems solutions” “self-insured risk and procurement of reinsurance for such risks” and  “advising, managing and administering” “in the identification of services is indefinite and must be clarified. The wording “other specialty lines coverage” is indefinite and overbroad because does not specify the field of the applicant’s insurance policy writing services. For instance, the applicant may be writing policies for medical malpractice. The word “insurance policy systems solutions” is over broad term that could specify any number of insurance services from insurance claims processing to insurance underwriting services. The applicant has specified the words “self insured risk” in the recitation of services. However, the applicant has failed to indicate the type of insurance services that are used with this type of insurance product or specify what a self insured risk is. The wording advising, manageing and administering” is unacceptable because it does not specify the field of insurance or the specific services the applicant is offering.    See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See 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.

 

The recitation of services in International Class 36 should be amended to read as follows, if accurate:

 

Insurance services, namely, underwriting, claims processing, brokerage, and program management in the nature of insurance administration in the fields of property and casualty insurance and reinsurance including surety, inland, marine, crime, general liability, public officials liability, artisan contractors' package coverages, environmental risk, pollution liability, employee practices liability, excess liability, public official liability, law enforcement liability, umbrella liability, automobile liability, automobile physical damage, damage, and excess liability workers' compensation, commercial liability, commercial property, public entity, religious organization property, religious organization liability, legal professional liability, excess and surplus insurance, package insurance, retail businesses, health and fire, insurance companies, reinsurance companies;

Insurance policy writing in the field of property and casualty insurance including coverage excess of primary insurance and retentions, directors and officers liability, employment practices liability, fiduciary liability, professional errors and omissions liability, crime/fidelity insurance; Insurance claims processing and administration services and insurance administration services; Financial risk management services in the field of insurance; Insurance services in the nature of loss control management for others; insurance safety consultation services; Insurance administration services, namely, insurance policy management services, insurance program placement services, property and casualty insurance program management services, insurance claims management and administration services; financial risk management services in the field of insurance; financial capital management services; Insurance underwriting of and claims administration of specialty insurance and reinsurance products, worker's compensation, specialty commercial, excess and surplus insurance; insurance procurement for reinsurance policies; insurance administration self-insured risk pools and first dollar programs for public entities; Insurance brokerage services in the fields of, public entity property, retail businesses, commercial property and commercial liability, property, surety, inland, marine, crime, general liability, public officials liability, artisan contractors' package coverages, environmental risk, pollution liability, employee practices liability, excess liability, public official liability, law enforcement liability, umbrella liability, automobile liability, automobile physical damage, damage, and excess liability workers' compensation, commercial liability, commercial property, public entity, religious organization property, religious organization liability, legal professional liability, excess and surplus insurance, package insurance,  health and fire; Insurance underwriting in the field of property and casualty coverages and coverage excess of primary insurance and retentions, as well as the underlying policies, including specialty coverages, directors and officers liability, fiduciary liability, professional errors and omissions liability, crime/fidelity insurance; insurance underwriting in the field of property, surety, inland, marine, crime, general liability, public officials liability, artisan contractors' package coverages, environmental risk, pollution liability, employee practices liability, excess liability, public official liability, law enforcement liability, umbrella liability, automobile liability, automobile physical damage, damage, and excess liability workers' compensation, commercial liability, commercial property, public entity, religious organization property, religious organization liability, legal professional liability, excess and surplus insurance, package insurance, retail businesses, health and fire; Insurance agencies in the field of property and casualty liability insurance coverages for political subdivisions, namely, cities, counties and towns, property, surety, inland, marine, crime, general liability, public officials liability, artisan contractors' package coverages, environmental risk, pollution liability, employee practices liability, excess liability, public official liability, law enforcement liability, umbrella liability, automobile liability, automobile physical damage, damage, and excess liability workers' compensation, commercial liability, commercial property, public entity, religious organization property, religious organization liability, legal professional liability, excess and surplus insurance, package insurance, retail businesses, health and fire; Actuarial services; Reinsurance underwriting services; Providing information in the field of insurance services via the Internet in International Class 36.

 

Application Not entitled to Register

 

The filing date of pending U.S. Application Serial No. 87161420 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.

 

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.

 

Response

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 23, 2019 for

U.S. Trademark Application Serial No. 88412927

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”