To: | Gerber Products Company (docket@hollandhart.com) |
Subject: | U.S. Trademark Application Serial No. 88509893 - GERBER LIFE DUET - 82145.2598 |
Sent: | October 04, 2019 09:22:58 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88509893
Mark: GERBER LIFE DUET
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Correspondence Address: |
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Applicant: Gerber Products Company
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Reference/Docket No. 82145.2598
Correspondence Email Address: |
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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: October 04, 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 that applicant must address:
EXAMINER’S AMENDMENT SUGGESTED
OFFICE SEARCH
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF SERVICES REQUIRES AMENDMENT
Specifically, the wording “selling” used in the clause “Insurance services, namely, underwriting, selling, issuing and administration of whole life and term life insurance products” (emphasis added) does not appear to describe a service rendered for the benefit of others. “Selling” normally refers to the activity of selling one’s own goods or services, and is not a registrable service rendered for the benefit of others. See TMEP §§1301.01(a)(ii), 1402.11. While this could encompass issuance or brokerage services, those are already listed in the identification of services, so no additional wording is suggested in lieu of the “selling” wording, which has been deleted from the suggestion below.
If applicant has any questions about any of the suggested wording, below, such as if this suggested wording is inaccurate or incomplete, then applicant is encouraged to contact the undersigned for a more detailed explanation or to discuss alternative amendments. Contact information is provided on the signature line.
Suggested Wording
Applicant may adopt the following identification of services, if accurate (suggested changes shown in bold typeface):
Class 36:
Insurance services, namely, underwriting, issuing and administration of whole life and term life insurance products; insurance administration; insurance brokerage; insurance consultancy;
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “LIFE” because it is merely descriptive of a characteristic or feature 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).
Specifically, the services are identified as relating to “life” insurance, so this wording is merely descriptive of, or generic for, such insurance services that encompass life insurance services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LIFE” 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.
RESPONSE GUIDELINES
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
/Wendell S. Phillips III/
Trademark Examining Attorney
Law Office 110
U.S. Patent and Trademark Office
(571) 272-5271
wendell.phillips@uspto.gov
RESPONSE GUIDANCE