Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 29, 2021

 

 

  INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 27, 2021.

 

In a previous Office action(s) dated November 21, 2020, the applicant was required to satisfy the following requirement(s):  (1) amend the identification of goods and/or services; (2) pay fees for any classes added to the application.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  (1) partially definite amended identification provided – specifically, Classes 9 and 44 are now acceptable.  See TMEP §§713.02, 714.04.

 

However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• IDENTIFICATION AND CLASSIFICATION OF SERVICES – Partial Requirement
• MULTIPLE CLASSES – ADDITIONAL FEES REQUIRED

 

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES – Partial Requirement

THIS PARTIAL REQUIREMENT APPLIES TO CLASS(ES) 36 AND 42 ONLY, BUT ONLY TO THE SERVICES SPECIFIED THEREIN

 

The identification of services is not acceptable because applicant has used the same language to describe services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(c).  Specifically, the wording “providing a website that provides insurance agents with information to collect insurance leads, conduct insurance sales activities, sell insurance policies, and enroll new members” appears in International Classes 36 and 42.  Generally, identical language cannot be used to describe services in more than one international class.  TMEP §1401.05(c).  For the USPTO to determine the proper classification of applicant’s services, applicant must specify the purpose for which the service activity is rendered.  Id.  For example, “layout services” is unacceptable because it refers to services in more than one international class – layout services “for advertising purposes” are classified in International Class 35 and  “other than for advertising purposes” are classified in International Class 41 – and does not clearly indicate which would be the appropriate international class.  The following identifications, however, would be acceptable:  “layout services for advertising purposes” in International Class 35 and/or “layout services other than for advertising purposes” in International Class 41.  See TMEP §1401.05(c) for more information about this issue.

 

In addition, the wording “providing a website that provides insurance agents with information to collect insurance leads, conduct insurance sales activities, sell insurance policies, and enroll new members; providing an interactive computer database, website and portal for insurance agents featuring insurance information and insurance lead information” is indefinite and misclassified.  In this case, classification would be determined by the purpose of the activities applicant provides.  Thus, applicant must amend the identification to specify the purpose of applicant’s services using wording that is relevant to each designated international class.  See id.  

 

Applicant may adopt the following wording and corresponding classification, if accurate:

 

Class 35

Providing an interactive computer database, website and portal for insurance agents featuring sales lead information for insurance

 

Providing a website that provides insurance agents with information to collect insurance sales leads

 

Class 36

Providing an interactive computer database, website and portal for insurance agents featuring insurance information

 

Providing a website that provides insurance agents with information to conduct insurance administration, brokerage and underwriting for all types of insurance

 

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.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The proposed amendment to the identification of goods and/or services is not acceptable for the reasons stated in this Office action.  Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments.  See TMEP §1402.07(d).

 

 

MULTIPLE CLASSES – ADDITIONAL FEES REQUIRED

 

The application identifies goods and/or services that are classified in at least FIVE classes; however, applicant submitted a fee(s) sufficient for only FOUR class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least FIVE classes; however, applicant submitted a fee(s) sufficient for only FOUR class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Jennifer H. Dixon/

Trademark Examining Attorney

Law Office 110

571-272-9359

jennifer.dixon@uspto.gov (informal inquiries only)

 

 

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 May 29, 2021 for

U.S. Trademark Application Serial No. 90134941

 

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. 

 

 

/Jennifer H. Dixon/

Trademark Examining Attorney

Law Office 110

571-272-9359

jennifer.dixon@uspto.gov (informal inquiries only)

 

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 May 29, 2021, 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.”