Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90021655 WARRANTY AS A SERVICE(Standard Characters, see http://uspto.report/TM/90021655/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

2021-04-11 90021655 - WARRANTY AS A SERVICE NFOA RESPONSE SUMMARY OF ISSUES: ? Section 2(e)(1) Refusal ? Likelihood of Confusion Applicant points out that the Examiner?s SUMMARY OF ISSUES only includes Section 2(e)(1) Refusal ? Likelihood of Confusion. This appears to be an unintentional error as the only issue in the Non Final Office Action cited by the Examiner is Section 2(e)(1) Refusal - Merely Descriptive. Therefore the Applicant could not respond to a Section 2(e)(1) Refusal ? Likelihood of Confusion that was not described in the office action. The Applicant does however respond to the Section 2(e)(1) Refusal - Merely Descriptive described by the Examiner as the sole issue of this Non Final Office Action. SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE The Applicant disagrees with the Examiner refusal because the mark is allegedly MERELY DESCRIPTIVE. The Examiner states ?Registration is refused because the applied-for mark merely describes a feature, purpose, and/or function of applicant?s services?. The Applicant?s applied for mark is for Services in International Class 036 For: Assessing insurance claims; Insurance claims processing The USPTO Trademark Glossary defines a DESCRIPTIVE MARK: A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa. See http://www.gov.uspto.report/learning-and-resources/glossary#sec-D. The examples cited in the USPTO Glossary are all directed specifically to the products described in the Goods. A merely descriptive mark is something that gives the customer an immediate idea of what the name entails and requires no existing knowledge to make sense of. A suggestive mark, on the other hand, is something that alludes to its purpose but doesn?t explicitly state it. In other words, it requires some of the customer?s imagination to make sense of what it means. Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In the instant case, applicant has applied to register the mark ?WARRANTY AS A SERVICE?. The Examiner cites the Examiner?s attached evidence from the websites of Risk & Insurance, MSX, MyITPros, SolutionFinderZ, Tech Mahindra, OnPoint Customer Service Solutions, Impact Technology Systems and WarrantyWeek.com shows that the phrase ?WARRANTY AS A SERVICE? is commonly used to indicate a service separate from a product warranty that provides warranty or extended warranty services on goods or services that are often provided by a third party or a party other than the one providing the original goods or services. However the USPTO definitions of a descriptive mark and a suggestive mark are dealing with a consumer or customer in general, not someone well versed in the Risk & Insurance or other websites or industry. Therefore the Examiner?s evidence is not relevant to the issue. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The Merriam-Webster definition of the word ?WARRANTY? is ?a usually written guarantee of the integrity of a product and of them maker's responsibility for the repair or replacement of defective parts?. As such a consumer would immediately have the idea that the Applicant?s mark is referring to ?a usually written guarantee of the integrity of a product and of them maker's responsibility for the repair or replacement of defective parts?, not services ?For: Assessing insurance claims; Insurance claims processing?. Therefore the mark is not merely descriptive. Instead it would require some of the customer?s imagination to make sense of what it means, meeting the USPTO definition of a suggestive mark. The Applicant requests the Examiner to dismiss the refusal and allow the mark for registration. CONCLUSION: It is believed that the foregoing amendments and responses fully comply with the requirements for satisfying the concerns of the Examiner. If the examiner does not find the above remarks sufficient, applicant's attorney respectfully requests that the examiner please contact applicant's Attorney.
Correspondence Information (current):
      EDMOND DEFRANK
      PRIMARY EMAIL FOR CORRESPONDENCE: ed@defrank.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ed@defrank.com
Correspondence Information (proposed):
      Edmond DeFrank
      PRIMARY EMAIL FOR CORRESPONDENCE: ed@defrank.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ed@defrank.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Edmond DeFrank/     Date: 04/11/2021
Signatory's Name: Edmond DeFrank
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 818 554-4073 Signature method: Signed directly within the form

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:    EDMOND DEFRANK
   LAW OFFICES OF EDMOND A. DEFRANK
   19360 RINALDI ST. #448
   19360 RINALDI ST. #448
   NORTHRIDGE, California 91326
Mailing Address:    Edmond DeFrank
   LAW OFFICES OF EDMOND A. DEFRANK
   19360 RINALDI ST. #448
   19360 RINALDI ST. #448
   NORTHRIDGE, California 91326
        
Serial Number: 90021655
Internet Transmission Date: Sun Apr 11 17:13:49 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20210411171349348880-90021655-
77031abe595851a303cb26a551d1aee2534f9e43
ee7ec99fe780db096b9b6e46f-N/A-N/A-202104
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