NOTE TO THE FILE
SERIAL NUMBER: 90123664
DATE: 12/22/2020
NAME: jgagliardi
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Beverly Marsh <bmarsh@standleyllp.com>
Sent: Monday, December 21, 2020 9:46 AM
To: Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV>; Trademarks <Trademarks@standleyllp.com>
Subject: RE: Your docket no. STA1898-365 - US Trademark Application Serial No. 90123664 (STATE AUTO CONNECT): proposed amended identification in Class 042 & disclaimer
Dear Ms. Gagliardi,
Thank you for your email. We agree to the amended identification of services you have proposed below. We also agree to entry of a disclaimer for the word “AUTO.”
Please let us know if you need anything else.
Best Regards and Happy Holidays!
Beverly
BEVERLY A. MARSH
Attorney at Law • Registered Patent Attorney
6300 Riverside Drive • Dublin, OH 43017 • USA
tel (614) 792-5555 • fax (614) 792-5536
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From: Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV>
Sent: Tuesday, December 15, 2020 6:58 PM
To: Trademarks <Trademarks@standleyllp.com>; Beverly Marsh <bmarsh@standleyllp.com>
Subject: Your docket no. STA1898-365 - US Trademark Application Serial No. 90123664 (STATE AUTO CONNECT): proposed amended identification in Class 042 & disclaimer
Dear Counsel,
I am examining the above-referenced trademark application. There are a couple of issues, and I am writing to see if we can resolve them by agreement.
(1) Identification of services: The pertinent identification in the application is:
Class 042: providing an internet website portal featuring non-downloadable software that enables insurance agents to quote, bind and service policies for a customer, and enables users to access and manage account information, obtain insurance cards, view billing information and make payments, manage automatic payment plans, obtain coverage information, submit claims, view claims information, initiate contact requests, and submit questions
The identification must be amended for the purposes of clarification and ensuring that the services are properly classified.
I would suggest the following amended identification, if accurate (proposed amendments in bold).
Class 042: providing temporary use of online non-downloadable software that enables insurance agents to quote, bind and service policies for a customer, and enables users to access and manage account information, obtain insurance cards, view billing information and make payments, manage automatic payment plans, obtain coverage information, submit claims, view claims information, initiate contact requests, and submit questions
(2) Disclaimer: The wording “AUTO” must be disclaimed because it is descriptive of the services identified. The Office does not allow applicants to claim exclusive rights to terms that others may need to use to describe their own goods or services in the marketplace. A disclaimer does not affect the appearance of the mark. The standardized format for a disclaimer is the addition of the following statement to the record:
No claim is made to the exclusive right to use “AUTO” apart from the mark as shown.
Would you let me know if the applicant would agree to amend the identification and to entry of the disclaimer? In the event that we are able to agree on amendments by noon Eastern time on Tuesday, December 22, I can make the changes on my end so the application can proceed.
I look forward to hearing from you.
Very truly yours,
Jeanine