Response to Office Action

ISO CLAIMSEARCH DNA

Insurance Services Office, Inc.

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 86164581
LAW OFFICE ASSIGNED LAW OFFICE 105
MARK SECTION
MARK http://uspto.report/TM/86164581/mark.png
LITERAL ELEMENT ISO CLAIMSEARCH DNA
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)

Applicant respectfully submits that the specimen it submitted for its services in Class 42, namely, “providing temporary use of web-based non-downloadable software over a global computer network for providing information about insurance data and assisting with analysis of insurance information and detection of insurance fraud,” relates to the provision of services through web-based software.  Although the specimen does not use the term “software,” the specimen describes the services in a manner sufficient to determine that the services are provided using software.  For example, the specimen states that ISO CLAIMSEARCH DNA applies “entity analytics, an innovative method to resolve and connect similar identity records to generate a single entity view.”  Analytics conducted on a system or entity would typically be executed using software.  Moreover, the functionality of the web-based software is discussed in the specimen, which states that ISO CLAIMSEARCH DNA “detects networks proactively by using advanced algorithms to uncover hidden relationships across large data sets” and that “using predictive models, the system scores your networks and provides you with only the most suspicious networks.”  “Advanced algorithms” used to uncover relationships within data would typically be implemented through use of software by a computer; they would not be implemented manually by Applicant.  The specimen also discusses the fact that Applicant’s services assist with fraud detection – the specimen notes that fraud networks target insurance companies and explains that Applicant’s services “detect[] complete and suspicious networks of individuals and businesses.” 

Accordingly, when the statements in Applicant’s specimen are viewed as a whole, they communicate to consumers that Applicant’s services are provided through web-based software and that consumers would use such software to assist with fraud detection and analyzing insurance information.  In view of the foregoing, Applicant respectfully requests that the Trademark Office reconsider the refusal of Applicant’s specimen.

SIGNATURE SECTION
RESPONSE SIGNATURE /Michael Friscia/
SIGNATORY'S NAME Michael R. Friscia
SIGNATORY'S POSITION Attorney of record, NJ bar member
SIGNATORY'S PHONE NUMBER 973-622-4444
DATE SIGNED 07/18/2017
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Jul 18 17:59:15 EDT 2017
TEAS STAMP USPTO/ROA-XX.XX.XX.XX-201
70718175915587538-8616458
1-510ca50227bfe6620438974
dab2e5d19af7cf8cd2ac1e559
cff9db57aba74cefd-N/A-N/A
-20170718174342524881



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 86164581 ISO CLAIMSEARCH DNA(Standard Characters, see http://uspto.report/TM/86164581/mark.png) has been amended as follows:

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

Applicant respectfully submits that the specimen it submitted for its services in Class 42, namely, “providing temporary use of web-based non-downloadable software over a global computer network for providing information about insurance data and assisting with analysis of insurance information and detection of insurance fraud,” relates to the provision of services through web-based software.  Although the specimen does not use the term “software,” the specimen describes the services in a manner sufficient to determine that the services are provided using software.  For example, the specimen states that ISO CLAIMSEARCH DNA applies “entity analytics, an innovative method to resolve and connect similar identity records to generate a single entity view.”  Analytics conducted on a system or entity would typically be executed using software.  Moreover, the functionality of the web-based software is discussed in the specimen, which states that ISO CLAIMSEARCH DNA “detects networks proactively by using advanced algorithms to uncover hidden relationships across large data sets” and that “using predictive models, the system scores your networks and provides you with only the most suspicious networks.”  “Advanced algorithms” used to uncover relationships within data would typically be implemented through use of software by a computer; they would not be implemented manually by Applicant.  The specimen also discusses the fact that Applicant’s services assist with fraud detection – the specimen notes that fraud networks target insurance companies and explains that Applicant’s services “detect[] complete and suspicious networks of individuals and businesses.” 

Accordingly, when the statements in Applicant’s specimen are viewed as a whole, they communicate to consumers that Applicant’s services are provided through web-based software and that consumers would use such software to assist with fraud detection and analyzing insurance information.  In view of the foregoing, Applicant respectfully requests that the Trademark Office reconsider the refusal of Applicant’s specimen.



SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 07/18/2017
Signatory's Name: Michael R. Friscia
Signatory's Position: Attorney of record, NJ bar member

Signatory's Phone Number: 973-622-4444

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86164581
Internet Transmission Date: Tue Jul 18 17:59:15 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201707181759155875
38-86164581-510ca50227bfe6620438974dab2e
5d19af7cf8cd2ac1e559cff9db57aba74cefd-N/
A-N/A-20170718174342524881



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