ESTTA Tracking number:
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`ESTTA1397146
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`Filing date:
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`11/20/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex Parte Appeal -
`Serial No.
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`97450510
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`Appellant
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`Insurity LLC
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`Applied for mark
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`SURE CLAIMS PAYMENTS
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`Correspondence
`address
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`Submission
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`Attachments
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`ANDREW D. BOCHNER
`BOCHNER PLLC
`1040 AVENUE OF THE AMERICAS
`15TH FLOOR
`NEW YORK, NY 10018
`UNITED STATES
`Primary email: andrew@bochner.law
`Secondary email(s): uspto@bochner.law
`646-971-0685
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`Request for remand/amendment
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`1252.023TM - Request to Remand_Amend_SIGNED.pdf(147362 bytes )
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`Joshua T. English
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`joshua@bochner.law
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`/Joshua T english/
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`11/20/2024
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re: Application of Insurity LLC
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`Serial No. 97/450,510
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`Filed: June 9, 2022
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`Examining Attorney: Gagliardi, Jeanine
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`Law Office: 120
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`For: SURE CLAIMS PAYMENTS
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`REQUEST TO REMAND
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`Applicant, by and through its undersigned counsel, hereby requests remand of the application
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`to the Examining Attorney.
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`I.
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`OVERVIEW
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`A request to remand must include a showing of good cause. TBMP §§ 1207.02, 1209.04. When
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`determining whether good cause has been shown, the Board considers both the reason given and the
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`point in the appeal at which the request for remand is made. In re O’Rourke-Nicaud Ventures, L.L.C.,
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`Serial No. 77035443, TTAB Decision at p. 2 (June 30, 2009) (citing TBMP § 1209.04).
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`Good cause exists to remand in view of the early stage of the present appeal. In response to a
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`Final Office Action dated May 29, 2024, Applicant filed a Request for Reconsideration along with a
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`Notice of Appeal on August 29, 2024. The Examining Attorney denied the Request for
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`Reconsideration on September 18, 2024, and Applicant’s appeal brief is due on November 20, 2024.
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`Therefore, the appeal is at a very early stage, before any appeal briefs have been submitted.
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`Good cause also exists for remand so that the Examining Attorney may consider their refusal
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`in light of the amendment requested below in relation to the services in Class 35. Remand is requested
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`so that the Examining Attorney may consider the amendments for registrability of the present
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`application.
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`II.
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`AMENDMENT
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`Applicant requests that the following services in Class 35 be removed from the present
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`application:
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`Class 35: "Providing online insurance billing services that feature payment tracking
`services "
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`III. THE EXAMINING ATTORNEY HAS NOT CONSIDERED THE AMENDMENT ON
`THE MERITS
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`Since Applicant, upon filing its response on August 29, 2024, had previously taken the
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`position that it would seek registration of the above-referenced services, the application with
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`these services removed has not yet been presented to the Examining Attorney for
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`consideration.
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`Applicant respectfully submits that the above amendment is directly applicable to the
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`registrability of the present application because in the Final Office Action dated May 29, 2024,
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`the Examiner indicated that the application would be in condition for publication but for the
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`above-referenced services.
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`Dated: November 20, 2024
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`Respectfully submitted,
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`By: /Joshua T English/
`Joshua T. English, Esq.
`Andrew D. Bochner, Esq.
`Bochner PLLC
`1040 Ave. of the Americas, 15th Fl.
`New York, NY 10018
`(646) 971-0685
`Attorney of Record for Applicant
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`2
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