| To: | Insurance Services Office, Inc. (mfriscia@mccarter.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 86919261 - 097171-00012 |
| Sent: | 9/14/2017 11:56:57 AM |
| Sent As: | ECOM104@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 86919261
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: Insurance Services Office, Inc.
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 9/14/2017
This is a corrective action. Upon further review, applicant's mark was withdrawn from publication because a portion of the wording in the identification of goods and services is indefinite and overbroad. The undersigned apologizes for any inconvenience that this may cause the applicant.
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
A portion of the identification of goods and services is indefinite and overbroad and must be clarified because applicant did not identify the goods and services with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and/or services. If the goods and/or services have no common commercial or generic name, applicant must describe the nature of the goods and/or services as well as their main purpose, channels of trade, and the intended consumers.
Class 35
The identification “Compilation and analysis of data in the fields of energy and natural resources, ...” is indefinite and overbroad. The purpose of the compilation and analysis of data must be provided and this determines classification. For instance, for financial purposes would be in Class 36. Compiling and analyzing business data would in Class 35. Applicant must specify the purpose of data and re-classify if necessary.
The identification “Providing in-person and on-line forums in the fields of technology, use of images, ...” is indefinite, overbroad, and misclassified. Online forums are in Class 38. For example, “Providing an on-line forum for {indicate field or subject of forum}” is a Class 38 service. In contrast, in-person forums are in Class 35 if they are business forums and in Class 41 if they are for educational purposes. For example, “Providing an in-person {specify business, commercial, promotional, advertising} forum in the field of {indicate subject matter or field}” is in Class 35, whereas “Providing an in-person {specify cultural, educational, entertainment, sporting} forum in the field of {indicate subject matter or field}” is in Class 41.
Class 36
The identification “Obtaining and providing information and images on property damage and terrain, to assist in insurance claims administration and analysis, insurance and financial risk management and analysis, financial risk assessment, financial and investment analysis, real estate valuation, and real estate risk management and analysis” is indefinite and overbroad.
“Obtaining information” is not a service if it is not done primarily for the benefit of others. To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); see TMEP §1301.01(b)(i). Similarly, collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others. See TMEP §1301.01(b)(iii).
The controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest).
"Obtaining . . . information . . . ," for example, could be a business research service in Class 35, a financial research service in Class 36, a photography service in Class 41, a technical research service in the field of {specify subject matter}in Class 42, visual home inspection services for sellers and purchasers of residential and commercial properties in Class 42, environmental testing and inspection services in Class 42, or inspection services, namely, detection of plumbing and roof leaks, termites, and electrical conditions in the inaccessible areas of an existing structure or home and walls and voids by means of infrared imaging units in Class 42. Applicant should clarify the service obtaining information and images and re-classify, if necessary.
In addition, the identification “obtaining and providing information and images on facilities and structures in the field of energy to assist in investment analysis, real estate valuation, and real estate investment and analysis" is indefinite and overbroad as to the wording "obtaining information" for the reasons stated above and applicant should clarify this wording and re-classify, if necessary.
Class 37
The identification “Obtaining information and images, and providing information, images, and analysis, relating to building structures, roofs, other features of building structures, other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, for use in building inspections, risk assessment, hazard assessment, and reconstruction assessment, and to assist in insurance claims management and analysis" is indefinite and overbroad. "Obtaining information and images" could be a research service or an inspection service as noted in the section above. It could also be a photography service in Class 41. Applicant should clarify the service obtaining information and images and re-classify, if necessary.
In addition, the information and analysis purposes of "risk assessment, hazard assessment, insurance claims management and analysis" are overbroad. For instance, financial risk assessment is in Class 36, evaluation and testing of real estate for the presence of hazardous material is in Class 42, and insurance claims administration is in Class 36. Applicant should amend the ID and re-classify, if necessary.
Class 41
The identification “Providing technology information relating to images" is misclassified and should be in Class 42. For example, “Providing technology information in the field of {indicate specific field, e.g., fashion, wearable technological products}” is in Class 42.
The identification “Providing information and analysis relating to images of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies” is indefinite and overbroad. Information services are classified based on the subject matter of the information. As written, it appears that applicant's primary information service is providing information on repair or maintenance, which is in Class 37. If applicant's information services are providing information in the fields of photography and videography for determining the conditions of buildings and land, this is in Class 41. Applicant must clarify this ID and re-classify, if necessary.
The identification “Providing information and analysis relating to images of building structures, roofs, other features of building structures, property, terrain, and other objects and conditions, gathered by manned and unmanned aerial systems" has the same issues as above.
In the identification “Educational services, namely, providing on-downloadable webinars in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture” the word "non-downloadable is misspelled as “on-downloadable.”
Class 42
The identification “obtaining information and providing information and analysis relating to images and measurements of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies” is indefinite and overbroad. Providing information relating to images encompasses providing information relating to alteration and retouching of photographic images in Class 40, to photography in Class 41, and electronic scanning of images in Class 42.
Further, the wording “obtaining information” is indefinite and overbroad. It appears that applicant would obtain the information from “aerial, terrestrial, satellite, and geospatial images and other images and remote sensing technologies,” however, this wording encompasses aerial photography services in Class 41 and providing a website featuring technology that enables interest users to share data in Class 42.
The wording “analysis” is also indefinite and overbroad. What is the purposes behind the analysis? Is it for financial analysis, such as determining the cost of repair or replacement in Class 36? Is it to determine conformity of the buildings, structures, etc. with certification standards in Class 42? Applicant must clarify and re-classify, if necessary.
Further, the identification “Providing geographic information and measurement information through the collection, manipulation, processing, and/or formatting of images and geographic measurements of geographic locations” is misclassified in part. The wording “providing geographic information” should be classified in Class 39. The identification “Providing computer representations of geographic locations created from aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies” is indefinite and overbroad. Is applicant providing images or services to create images? Providing non-downloadable online graphics is in Class 41. Providing computer graphics services are in Class 42. Applicant should clarify the ID and re-classify, if necessary.
The identification “Providing three dimensional images ...relating to measurements and images of building structures, roofs, other features of building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement” is also misclassified as to “providing three dimensional images.” Providing online non-downloadable images is a service in Class 41. Downloadable image files are in Class 9. The applicant must specify the indefinite/overbroad IDs, which may require re-classification, if appropriate.
Class 44
The identification “Obtaining and providing information and images on agriculture to assist in insurance claims management and analysis, risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis” is indefinite and overbroad. "Obtaining ... information and images" could be a research service or an inspection as previously noted. It could also be a photography service in Class 41. Applicant should clarify the service obtaining information and images and re-classify, if necessary.
Class 45
The identification “Electronic monitoring and reporting of status and conditions in residential and commercial buildings and in vehicles using computers or sensors’ is misclassified and should be in Class 42. For example, “Electronic monitoring of {indicate physical property or condition, e.g., atmospheric pressure, sewer systems, etc.} using computers and sensors” is in Class 42.
In addition, the identification “Obtaining and providing information from computers or sensors relating to the status and conditions in residential and commercial buildings and in vehicles” is indefinite and overbroad. This identification encompasses monitoring of physical property using computer or sensors in the nature of electronic data collection in Class 42 and also home security monitoring using sensors in Class 45. Applicant must clarify the services and re-classify if necessary.
Further, the identification “Providing an interactive website featuring information, images, and analysis relating to law enforcement, and emergency services” is indefinite and overbroad. Information services are classified based on the subject matter of the information. "Law enforcement" and "emergency services" are not definite subject matters. These fields encompass providing information on emergency road side repair services in Class 37, providing information on classes for law enforcement and emergency personnel in the field of medicine in Class 41, etc. Applicant must specify a subject matter and re-classify, if necessary.
Further, the wording "Providing an interactive website featuring .. images ... relating to law enforcement and emergency services" is indefinite and overbroad. Downloadable images are in Class 9 and non-downloadable images are in Class 41. Applicant must clarify the wording "images" and re-classify, if necessary.
Also, “analysis” is indefinite and overbroad. What is applicant analyzing and what is the purpose of the analysis? Business management analysis is in Class 35, financial analysis is in Class 36, analysis of the services of others to determine conformity with certification standards is in Class 42. Applicant must amend the identification and re-classify, if necessary. The identification "Providing information, images, and analysis relating to law enforcement, and emergency services, used to analyze risk" is also indefinite and overbroad. Please see above regarding the concerns with the wording “images.”
In addition, the wording “information relating to law enforcement and emergency services used to analyze risk" is indefinite and overbroad. As noted above, information services are classified based on the subject matter of the information. Here, "used to analyze risk" encompasses financial risk assessment services in Class 36, safety auditing to improve the safety of personnel while on the job in Class 42, etc. Applicant must amend the ID to further specify the subject matter and re-classify, if necessary.
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.
Subject to the foregoing observations, the following wording is suggested, if accurate:
Class 9: Downloadable reports about property damage, loss, climate, weather events, and catastrophes; downloadable images in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government and geopolitics; software for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; software for detecting, identifying, measuring and analyzing roofs, building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; software for use in connection with aerial, terrestrial, satellite and other images and remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and with photographic data, geospatial data, locational data and other information and data generated in connection with remote sensing technologies; downloadable reports about property damage, loss, climate, weather events, and catastrophes, with aerial, terrestrial, satellite and other images and remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and with photographic data, geospatial data, locational data and other information and data generated in connection with remote sensing technologies; software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, and geospatial images and other images and outputs from sensory and detection technologies; software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, and geospatial images, and other images and outputs from sensory and detection technologies in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, real estate, and geopolitics; software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, aerial, terrestrial, satellite, and geospatial images, and other images and outputs from sensory and detection technologies in connection with fraud detection, assessment of energy efficiency, analysis of infrastructure, analysis of electrical utilities infrastructure, forensic analysis, geographical information systems and risk assessment, risk detection, risk analysis, and risk management; software for creating drawings, floorplans, and schematics of building structures, roofs, other features of building structures, property, terrain and other objects and conditions; software for integrating electronic data and other information with real world environments; software for integrating electronic data and other information with real world environments for the purpose of generating maps, representations of building structures, roofs, other features of building structures, property, and terrain and other objects and conditions; software for use in providing information featuring aerial, terrestrial, satellite and geospatial images, and other images and other remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and photographic data, geospatial data, locational data and other information and data generated in connection with remote sensing technologies; software for photogrammetric analysis; software for use in detection, inspection, evaluation and assessment of buildings and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; software for risk assessment, analysis and management and hazard assessment, analysis and management; software to assist in insurance claims assessment, analysis and management; software for capturing, storing, managing, processing and transmitting photos, videos and other sensory and detection information; software used for capturing, storing and accessing images and geographic, locational and other data regarding the captured, stored and accessed images; software for use in analysis, predictive modeling, and creating reports, relating to property damages, loss information, climate, weather events, and catastrophes; software for controlling imaging apparatus and technologies and other sensory and detection apparatus and technologies; software for use in valuations of real estate, buildings, fixtures, personal property and other objects; software for identifying, documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; software, namely, graphic based construction estimation software, which estimates the cost of building or repairing structures and other objects; software, namely, cost estimation, project management and analytic reporting software; software for identifying, estimating and valuing insuring, remodeling, replacement and construction costs; downloadable reports, data files and software featuring information and analytics regarding weather, hazards and other events conditions; downloadable electronic maps featuring information and analytics regarding weather, hazards and other conditions; downloadable software for creating and viewing reports and maps; downloadable white papers, research papers, instruction books, and tutorials, all in the field of photography, videography, technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture, and consulting and services related thereto; software for the operation of unmanned aerial systems; downloadable reports with information from computers or sensors relating to the status and conditions in residential and commercial buildings and in vehicles; providing downloadable three dimensional images relating to measurements and images of building structures, roofs, other features of building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement
Class 35: Providing pricing information for use in estimating and valuing the costs of construction, remodeling, repair or replacement of residential, commercial, industrial and agricultural structures and the fixtures and contents thereof; compilation and analysis of BUSINESS data in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, real estate, and geopolitics; auditing of insurance claims estimations, namely, insurance claims auditing services; business consulting services; providing business information in the fields of images and geospatial data; providing in-person BUSINESS forums in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture; BUSINESS consulting services in the field of energy usage management and energy efficiency; providing business information in the fields of energy and energy efficiency, agriculture, natural resources, and geopolitical issues; business research and data analysis services in the field of drone services; providing information on facilities and structures in the field of energy, to assist in business risk management and analysis; providing an interactive website featuring information and analysis relating to assessment of energy efficiency and business risk management; providing BUSINESS information and analysis relating to energy, energy efficiency, geopolitics, mining, supply chain logistics, and government; providing BUSINESS information and analysis relating to assessment of energy efficiency and business risk management
Class 36: Providing FINANCIAL information on property damage and terrain, to assist in insurance claims administration and analysis, insurance and financial risk management and analysis, financial risk assessment, financial and investment analysis, real estate valuation, and real estate risk management and analysis; insurance appraisals and evaluations, namely, insurance appraisals and evaluations for insurance claims of personal property and real estate; providing an interactive website featuring information and analysis for financial and insurance purposes relating to insurance, banking, and real estate; providing an interactive website featuring information and analysis for financial and insurance purposes relating to analysis of insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; providing information and analysis for financial and insurance purposes relating to insurance, banking, real estate, property evaluation, and terrain evaluation in the nature of land evaluation; providing information and analysis, relating to analysis for financial and insurance purposes of insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; providing FINANCIAL information on facilities and structures in the field of energy to assist in investment analysis, real estate valuation, and real estate investment and analysis; Providing information relating to building structures, roofs, other features of building structures, other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, for use in FINANCIAL risk assessment and to assist in insurance claims management and analysis
Class 37: INSPECTION SERVICES, NAMELY, Providing information relating to building structures, roofs, other features of building structures, other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, for use in building inspections and reconstruction assessment, and to assist in insurance claims management and analysis; providing an interactive website featuring information and analysis relating to construction; providing information and analysis relating to construction and to repair and maintenance of manned and unmanned aerial vehicles and related technology in the nature of computer vision technology, and mobile remote sensing technology; providing an interactive website featuring information and analysis relating to electrical utilities infrastructure construction; providing an interactive website featuring information and analysis relating to infrastructure construction; providing information and analysis relating to electrical utilities infrastructure construction; providing information and analysis relating to infrastructure construction
Class 38: Electronic transmission for others of information on data from aerial, terrestrial, and satellite images and other remote sensing technologies, photographic data, geospatial data, locational data, insurance claims, valuations of real estate, buildings, fixtures, and personal property, and building construction cost estimating and valuation via the Internet; providing on-line forums for transmission of messages among computer users concerning technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture, and consulting and services related thereto in the nature of consulting services in the field of communications and consulting services to facilitate on-line forums; providing on-line forums in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; providing on-line forums in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; Providing on-line forums in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture
Class 39: Rental of unmanned aerial vehicles; providing geographic information through the collection, manipulation, processing and formatting of images and geographic measurements of geographic locations; providing an interactive website featuring information and analysis relating to transportation and cartography; providing an interactive website featuring information and analysis relating to geographical information systems; providing information and analysis relating to transportation, cartography, and geographical information systems; providing geographic information through the collection, manipulation, processing, and formatting of images and geographic measurements of geographic locations
Class 40: Alteration and retouching of {indicate type of visual material, e.g., photographic images, video images}; Printing of photographic images from digital media
Class 41: Educational services, namely, providing internships, externships, and apprenticeships in the fields of computer programming, computer software development, computer software development in the field of mobile applications and interfaces, computer system design, computer science, computer software application development, web development, and web design; non-downloadable electronic publications in the nature of reports with information and analysis relating to data from aerial, terrestrial, and satellite images and other remote sensing technologies, photographic data, and geospatial data; educational services, namely, providing in-person and on-line training courses, seminars and workshops and providing round table and panel discussions, in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture, and consulting and services related thereto in the nature of consultation in the fields of photography, videography, technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture; aerial photography and videography services; training in the use and operation of unmanned aerial vehicles and consultation relating thereto; online nondownloadable white papers, research papers, instruction books, and tutorials, all in the fields of photography, videography, technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, and agriculture; providing information and analysis relating to images of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies, NAMELY, {CLARIFY SERVICE, e.g., providing information in the fields of photography for determining the conditions of buildings and land}; providing information and analysis relating to images of building structures, roofs, other features of building structures, property, terrain, and other objects and conditions, gathered by manned and unmanned aerial systems, NAMELY, {CLARIFY SERVICE, e.g., providing information in the fields of videography for determining the conditions of buildings and land}; providing on-line discussions in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; educational services, namely, providing non-downloadable webinars in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; providing on-line discussions for on-line collaboration in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; educational services, namely, providing non-downloadable webinars in the fields of technology, use of images, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, and agriculture; aerial photography services; providing non-downloadable images on facilities and structures in the field of energy, to assist in business risk management and analysis; providing non-downloadable images relating to analysis for financial and insurance purposes of insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; providing non-downloadable images relating to emergency medical response services, used to analyze health risk; providing non-downloadable images relating to fraud detection
Class 42: Providing an interactive website featuring technology that allows users to view, annotate and manipulate geospatial data related to properties, structures and characteristics of the earth and objects upon the earth; providing information and analysis relating to measurements of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies; providing measurement information through the collection, manipulation, processing, and formatting of images and geographic measurements of geographic locations; providing computer representations of geographic locations created from aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies, NAMELY, providing computer graphics services; providing computer modeling relating to measurements and images of building structures, roofs, other features of building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; remote measuring services for building structures, roofs, property, other features of building structures, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial images and other images, other remote sensing technologies, and computer software; providing information, images, and analysis, relating to weather, natural hazards, climate, and natural disasters, for use in building inspections, risk assessment, hazard assessment, and reconstruction assessment, and to assist in insurance claims management and analysis; providing temporary use of online nondownloadable software for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; providing temporary use of online nondownloadable software for detecting, identifying, measuring and analyzing roofs, building structures, property, terrain, and other objects and conditions; providing temporary use of online nondownloadable software for use in connection with aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies, and with photographic data, geospatial data, locational data, and other information and data in connection with remote sensing technologies; providing temporary use of online nondownloadable software for creating drawings, floorplans, and schematics of building structures, roofs, other features of building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; providing temporary use of online nondownloadable software for integrating electronic data and other information with real world environments; providing temporary use of online nondownloadable software for integrating electronic data and other information with real world environments for the purpose of generating maps, representations of building structures, roofs, other features of building structures, property, terrain and other objects and conditions; providing temporary use of online nondownloadable software for use in providing information featuring aerial, terrestrial, satellite and geospatial images and other images and remote sensing technologies and photographic data, geospatial data, locational data, and other information and data generated in connection with remote sensing technologies; providing temporary use of online nondownloadable software for photogrammetric analysis; providing temporary use of online nondownloadable software for use in detection, inspection, evaluation and assessment of buildings and other objects in the nature of structural material and contents of buildings and landand conditions in the nature of damage and need for repair or replacement; providing temporary use of online nondownloadable software for risk assessment, analysis and management and hazard assessment, analysis and management; providing temporary use of online nondownloadable software to assist in insurance claims assessment, analysis and management; providing temporary use of online nondownloadable software for capturing, storing, management, processing and transmitting photos, videos and other sensory and detection information; providing temporary use of online nondownloadable software used for capturing, storing and accessing images and geographic, locational and other data regarding the captured, stored and accessed images; providing an interactive website featuring technology that allows users to order and view images, map images, and geospatial data; providing an interactive website featuring information, images, and analysis relating to building structures, roofs, other features of building structures, property, terrain, other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, weather, climate, and natural disasters; providing an interactive website featuring information, images, and analysis relating to natural resources, weather, and climate; providing an interactive website featuring information, images and analysis relating to forensic analysis; providing information, images, and analysis relating to natural resources, weather, and climate; providing information, images, and analysis relating to forensic analysis; providing information and analysis relating to measurements of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, gathered by manned and unmanned aerial systems; providing temporary use of online nondownloadable software for use in analysis, predictive modeling, and creating reports, relating to property damages, loss information, climate, weather events, catastrophes, and other events and conditions; providing information and analysis relating to landscapes, climate, and the environment, and changes and risks associated therewith using aerial, terrestrial, satellite and other images and remote sensing technologies; providing temporary use of online nondownloadable software for controlling imaging and other sensory and detection apparatus and technologies; providing an interactive website featuring technology that allows users to access, review, comment on, receive training on, and provide feedback on, software and services in the field of insurance and conduct interactive discussions in the field of insurance; providing temporary use of online non-downloadable software for use in valuations of real estate, buildings, fixtures, personal property and other objects; providing temporary use of online nondownloadable software for documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; providing temporary use of online nondownloadable software for communicating with insurance policyholders and insurance industry professionals, for providing and tracking customer surveys and for estimating the costs of insurance, construction, engineering, remodeling or replacement of residential, commercial, industrial and agricultural buildings and the fixtures and contents thereof; providing temporary use of online nondownloadable software, namely, graphic based construction estimation software, which estimates the cost of building or repairing structures and other objects in the nature of structural material and contents of buildings and land; providing temporary use of online nondownloadable software, namely, nondownloadable cost estimation, project management and analytic reporting software; providing temporary use of online nondownloadable software for identifying, estimating and valuing insuring, remodeling, replacement and construction costs; providing temporary use of online nondownloadable software featuring information and analytics regarding weather, hazards and other events and conditions in the nature of climates, and catastrophes; providing a database featuring information and analysis about weather, climate and natural hazards; providing temporary use of online non-downloadable software for creating reports about weather, climate, and natural hazards; providing temporary use of online non-downloadable software for creating maps; electronic storage services, namely, storing data for others relating to insurance claims, valuations of real estate, buildings, fixtures, and personal property, and construction, replacement and remodeling costs estimates; electronic storage services, namely, storing data for others in the fields of residential, commercial, industrial and agricultural real estate valuations, construction, replacement and remodeling costs estimates; electronic storage services, namely, storing data relating to residential insurance valuation calculations; electronic storage services, namely, storing data on insurance claims that involve damages to real property, home warranties, valuations of real estate and buildings, and insurance policies covering real estate; electronic storage services, namely, storing data from aerial, terrestrial, satellite and other images and remote sensing technologies, photographic data and geospatial data; providing temporary use of online non-downloadable software for education and training in the fields of insurance cost valuation and residential construction and remodeling; providing temporary use of online non-downloadable software for identifying documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; providing temporary use of online non-downloadable software for calculating the costs of repairs and for monitoring of claims under home warranties and building insurance policies; providing temporary use of online non-downloadable software for calculating the costs of, tracking the progress and payments of, and reporting personal property claims; development of industry standards and practices relating to images and geospatial intelligence and analysis, and use of manned and unmanned aerial vehicles and related technology; providing technology information relating to geospatial intelligence and analysis; providing on-line databases and preparation of customized reports and analytical documents delivered electronically featuring information and analytics on weather, climate and natural hazards; providing temporary use of on-line, non-downloadable software for creating and viewing reports and maps about weather, climate and natural hazards; providing a website featuring temporary use of non-downloadable software for creating and viewing reports and maps; providing temporary use of online nondownloadable software for the operation of unmanned aerial systems; providing temporary use of online nondownloadable software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, and geospatial images and other images and outputs from sensory and detection technologies; providing temporary use of online nondownloadable software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, geospatial and other images and outputs from sensory and detection technologies in the fields of in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather and climate, cartography, insurance, banking, construction, real estate, police protection, emergency services, government, and geopolitics; providing temporary use of online nondownloadable software for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, aerial, terrestrial, satellite, and geospatial images and other images and outputs from sensory and detection technologies in connection with fraud detection, assessment of energy efficiency, analysis of infrastructure, analysis of electrical utilities infrastructure, forensic analysis, geographical information systems and risk assessment, risk detection, risk analysis, and risk management; providing information and images on weather events and catastrophes and climate to assist in insurance claims management and analysis, risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis; providing an interactive website featuring information, images, and analysis relating to planning and design of electrical utilities infrastructure; providing an interactive website featuring information, images, and analysis relating to analysis of infrastructure planning and design; providing information, images, and analysis relating to electrical utilities infrastructure planning and design; providing information, images and analysis, relating to analysis of infrastructure planning and design; providing a website featuring technology that enables interest users to share data; electronic monitoring and reporting of status and conditions in residential and commercial buildings and in vehicles using computers or sensors; monitoring of physical property using computer or sensors in the nature of electronic data collection; providing an interactive website featuring images relating to assessment of energy efficiency and business risk management; providing an interactive website featuring images relating to insurance, banking, and real estate; providing an interactive website featuring images relating to analysis of insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; providing an interactive website featuring images relating to construction; providing an interactive website featuring images relating to electrical utilities infrastructure construction; providing an interactive website featuring images relating to infrastructure construction; providing an interactive website featuring images relating to transportation and cartography; providing an interactive website featuring images relating to geographical information systems; providing an interactive website featuring images relating to agriculture; providing an interactive website featuring images relating to emergency response IN THE NATURE OF {SPECIFY FIELD, e.g., emergency medical response services}; providing an interactive website featuring images relating to law enforcement IN THE NATURE OF {SPECIFY FIELD, e.g., police protection}; providing an interactive website featuring images relating to fraud detection; electronic scanning of {indicate type of visual material, e.g. photographic images}
Class 44: Providing information on agriculture to assist in insurance claims management and analysis, risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis; providing an interactive website featuring information and analysis relating to agriculture; providing an interactive website featuring information and analysis relating to emergency response IN THE NATURE OF {SPECIFY FIELD, e.g., emergency medical response services}; providing information and analysis relating to emergency response IN THE NATURE OF {SPECIFY FIELD, e.g., emergency medical response services}, used to analyze health risk
Class 45: Home and vehicle security monitoring using sensors; providing information from computers or sensors relating to the status and conditions in residential and commercial buildings and in vehicles; providing an interactive website featuring information and analysis relating to law enforcement IN THE NATURE OF {SPECIFY FIELD, e.g., police protection}; providing an interactive website featuring information and analysis relating to fraud detection; providing information, images, and analysis relating to law enforcement IN THE NATURE OF {SPECIFY FIELD, e.g., police protection}, used to analyze safety risk; providing information and analysis relating to fraud detection
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
INSUFFICIENT FEE
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.
MULTIPLE-CLASS REQUIREMENTS
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and services that are classified in at least eleven classes; however, applicant submitted a fee sufficient for only ten classes. 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
RESPONSE GUIDANCE
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Donald Johnson/
Examining Attorney
Law Office 104
(571) 272-7831
don.johnson@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.