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:  August 30, 2020

 

 

INTRODUCTION

The examining attorney previously issued a final Office action on August 5, 2020.  Upon further consideration, the examining attorney has determined that the identification of the services requires amendment.

 

Thus, the trademark examining attorney is raising a new nonfinal examination issue in this Office action; therefore, jurisdiction remains with the trademark examining attorney.  See 37 C.F.R. §2.141(a); TMEP §714.05-.05(a).  Filing an appeal with the Trademark Trial and Appeal Board would be considered premature at this time.  See TMEP §1501.  Applicant must respond to the trademark examining attorney about the issue(s) raised in this Office action. 

 

Applicant will note the following:

 

 

IDENTIFICATION OF THE SERVICES

The identification for software is indefinite and must be clarified to specify (1) the function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Wording in applicant’s proposed identification of goods and/or services that should be deleted appears in strikethrough. Additional suggested wording appears in bolded italics. Please note that these forms of stylization are being used to provide guidance in forming an acceptable amended identification; they should not be made part of any amendments offered by applicant in its response.

 

Applicant may adopt the following wording, with applicant providing the information described inside brackets, if accurate: 

 

“Platform as a service featuring a computer software platform allowing for the design, development and storage and retrieval of products and services in the fields of property casualty risks, catastrophic risks, weather related risks, terrorism risks, mortality and longevity risks, insurance, reinsurance, insurance portfolio management and risk management; Providing temporary use of non-downloadable hosted computer software for [INDICATE function of software, e.g., for filing claims, for creating actuarial tables, etc.] use in the fields of property casualty risks, catastrophic risks, weather related risks, terrorism risks, mortality and longevity risks, insurance, reinsurance, insurance portfolio management and risk management;” in Class 42 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or 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.

 

For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”

 

 

LIKELIHOOD OF CONFUSION REFUSAL

Registration of the applied-for mark has been refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2343085 and 5192006.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registrations previously made of record.  The refusal is continued and maintained.

 

 

CLOSING

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Do not respond via e-mail; e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  How to respond:  Click to file a response to this nonfinal Office action.    

 

Please telephone the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

 

/Tracy Fletcher/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Direct Dial: 571-272-9471

tracy.fletcher@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 August 30, 2020 for

U.S. Trademark Application Serial No. 88660824

 

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. 

 

 

/Tracy Fletcher/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Direct Dial: 571-272-9471

tracy.fletcher@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 August 30, 2020, 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.”