UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.

 

ISSUE/MAILING DATE: 5/5/2016

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Although no conflicting marks that would bar registration under Trademark Act Section 2(d) have been found, applicant must respond to the requirements set forth below.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services Requirement
• Fee Insufficient

 

 

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

The identification of goods and services is indefinite and must be clarified because applicant did not identify the highlighted goods and services with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the industry or field in which the goods and services are used or intended to be used.

 

The wording “reports” is indefinite. For example, downloadable reports about properties and buildings in in Class 9 but printed reports featuring {indicate subject matter} and research reports featuring {indicate subject matter} are in Class 16.

 

The wording “consulting and services related thereto” in international classes 9, 35, 38, 41, and 45 is indefinite because the type of consulting and services are not sufficiently identified. For example, computer software consulting is a Class 42 service. Providing consumer product advice relating to software is a Class 35 service.  Providing lease financing for computer software is a Class 36 service. Consulting services in the field of communications is a Class 38 service.  Licensing of computer software is a Class 45 service.

 

“Online nondownloadable books, white papers, research papers, instruction books, tutorials, treatises and educational games, all in the fields of photography, videography, technology, use of imagery, 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, agriculture, and products, consulting and services related thereto” is misclassified in Class 42. It is a Class 41 services and must be reclassified.

 

“Electronic monitoring and reporting of status and conditions in residential and commercial buildings and in vehicles using computers or sensors”; and “obtaining and providing information from computers or sensors relating to the status and conditions in residential and commercial buildings and in vehicles” are misclassified in Class 42. They are Class 45 services and must be reclassified.

 

With respect to the services “Providing information in the field of” and “Providing a website featuring information in the field of,” the proper classification depends on the subject matter of the information. Applicant misclassified many of the services involving the provision of information by failing to classify them according to subject matter of the information. For example, in Class 42, applicant submitted: “providing an interactive website featuring information, imagery, and analysis relating to natural resources, energy, energy efficiency, electrical utilities infrastructure, agriculture, geopolitics, mining, transportation, supply chain, engineering, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, astronomy and space exploration, weather, and climate.” The providing information and featuring information services have been reclassified below according to the apparent subject matter of the information.

 

Class 35 includes information about energy, energy efficiency, geopolitics, mining, supply chain logistics, government, and business risk management).

 

Class 36 includes information about insurance, banking, real estate, property (if in the nature of real estate), terrain (if in the nature of land), risk assessment, risk detection, risk analysis, and financial risk management.

 

Class 37 includes information about construction, building structures (if construction of building structures), and electrical utilities infrastructure.

 

Class 39 includes information about includes information about transportation, cartography, and geographical information systems. 

 

Class 41 includes information about imagery (in the nature of photography).

 

Class 42 includes information about natural resources, engineering, weather and climate, natural disasters, measurements, forensic analysis, environment (need clarification as to what type of environmental information is being provided), geospatial intelligence, astronomy and space exploration (if research/design/development related to space and astronomy research/consultation)

 

Class 44 includes information about agriculture (need further clarification regarding specific subject matter).

 

Class 45 includes information about law enforcement, fraud detection, and emergency services (need further clarification).

 

Applicant may adopt the following identification, if accurate:

 

Class 9: Software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}; Downloadable reports ABOUT (INDICATE SUBJECT MATTER}; downloadable images in the field of {indicate subject matter or field, e.g., automobiles, cats and dogs, etc.}; 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}; software for use in connection with aerial, terrestrial, satellite and other imagery and remote sensing technologies IN THE NATURE OF {SPECIFY TYPES} and with photographic data, geospatial data, locational data and other information and data generated in connection with remote sensing technologies;  downloadable reports ABOUT (INDICATE SUBJECT MATTER} with aerial, terrestrial, satellite and other imagery and remote sensing technologies IN THE NATURE OF {SPECIFY TYPES} 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 imagery and other imagery 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 imagery, and other imagery and outputs from sensory and detection technologies in the fields of energy and natural resources, agriculture, mining, transportation, supply chain, engineering, weather and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, real estate, astronomy and space exploration 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 imagery, and other imagery 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 imagery, and other imagery and other remote sensing technologies IN THE NATURE OF {SPECIFY TYPES} 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}; 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, catastrophic loss information, climate, weather events, catastrophes and other events and conditions IN THE NATURE OF {SPECIFY TYPES OF EVENTS AND CONDITIONS}; 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 other objects IN THE NATURE OF {SPECIFY TYPES OF OBJECTS} 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 ELECTRONIC books, white papers, research papers, instruction books, tutorials, treatises and educational games, all in the field of photography, videography, technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology IN THE NATURE OF {SPECIFY TYPES OF TECHNOLOGIES}, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}; 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

 

Class 16: Printed reports featuring {indicate subject matter, e.g., sensory and detection technologies}; Research reports featuring {indicate subject matter, e.g., sensory and detection technologies}

 

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 data in the field of {specify field or subject matter}; auditing of insurance claims estimations, NAMELY, Insurance claims auditing services; consulting services IN THE FIELD OF {SPECIFY FIELD IN CLASS 35, e.g., consulting services in business organization and management}; business consulting services; processing services, NAMELY, {SPECIFY FIELD IN CLASS 35, e.g., data, payroll}; providing business information in the field of {indicate specific subject matter}; providing {SPECIFY TYPE, e.g., in-person, on-line} forums in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology IN THE NATURE OF {SPECIFY TYPES OF TECHNOLOGIES}, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 35}; 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; Obtaining and providing information and imagery on energy sources 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, imagery, and analysis relating to energy, energy efficiency, geopolitics, mining, supply chain LOGISTICS, government; providing an interactive website featuring information, imagery, and analysis relating to assessment of energy efficiency and BUSINESS risk management; providing information, imagery, and analysis relating to energy, energy efficiency, geopolitics, mining, supply chain LOGISTICS, government; providing information, imagery, and analysis relating to assessment of energy efficiency and BUSINESS risk management

 

Class 36: Obtaining and providing information and imagery on property damage and terrain 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; insurance appraisals and evaluations, NAMELY, appraisals and evaluations for insurance claims of {SPECIFY FIELD, e.g., personal property, real estate}; providing an interactive website featuring information, imagery, and analysis relating to electrical utilities infrastructure, insurance, banking, real estate; providing an interactive website featuring information, imagery, and analysis relating to analysis of infrastructure, analysis of electrical utilities infrastructure, risk assessment, risk detection, risk analysis and FINANCAL risk management; providing information, imagery, and analysis relating to electrical utilities infrastructure, insurance, banking, real estate, property EVALUATION, terrain EVALUATION IN THE NATURE OF LAND EVALUATION; providing information, imagery, and analysis relating to analysis of infrastructure, analysis of electrical utilities infrastructure, risk assessment, risk detection,  risk analysis and FINANCAL risk management

Class 37: obtaining information and imagery, and providing information, imagery, and analysis, relating to building structures, roofs, other features of building structures, other objects IN THE NATURE OF {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS, for use in building inspections, risk assessment, hazard assessment, reconstruction assessment, and to assist in insurance claims management and analysis; providing an interactive website featuring information, imagery, and analysis relating to construction; providing information, imagery, and analysis relating to construction and to construction, repair and maintenance OF manned and unmanned aerial vehicles and related technology {SPECIFY TECHNOLOGY}

 

Class 38: Electronic transmission FOR OTHERS of information on data from aerial, terrestrial, and satellite imagery 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 {SPECIFY TRANSMISSION METHOD, e.g., via electronic communications networks, via global computer network}; providing on-line forums for transmission of messages among computer users concerning {indicate field or subject of forum}; providing on-line forums for transmission of messages among computer users concerning technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology IN THE NATURE OF {SPECIFY TYPES OF TECHNOLOGY}, insurance, real estate, building and construction, catastrophes, climate, weather events and issues, energy, natural resources, geopolitics, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 38, e.g., Consulting services in the field of communications}; providing on-line forums for transmission of messages among computer users which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology IN THE NATURE OF {SPECIFY TYPES OF TECHNOLOGY}, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 38, e.g., Telecommunications consultation}; providing {SPECIFY MEANS, e.g., on-line forum, on-line chat rooms, on-line listservers} for transmission of messages among computer users for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology IN THE NATURE OF {SPECIFY TYPES OF TECHNOLOGY}, insurance, real estate, building and construction, climate, catastrophes, weather events and issues, energy, natural resources, geopolitics, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 38, e.g., Provision of access to data or documents stored electronically in central files for remote consultation}; providing an interactive website featuring information, imagery, and analysis relating to astronomy and space exploration; providing information, imagery, and analysis relating to astronomy and space exploration

 

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, imagery, and analysis relating to transportation and cartography; providing an interactive website featuring information, imagery, and analysis relating to geographical information systems; providing information, imagery, and analysis relating to transportation, cartography, and geographical information systems

 

Class 41: Educational services, namely, providing classes, seminars, conferences, workshops, and on-line courses of instruction 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; educational services, namely, conducting distance learning instruction at the secondary, college and graduate levels; educational services, namely, providing courses of instruction at the {indicate specific level, e.g. primary, secondary, college} level over the Internet 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; 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 imagery 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 field of {indicate subject matter}; 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 imagery, 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, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 41, e.g., Consultation in the field of in-person and on-line training courses educational systems }; aerial photography and videography services; training in the use and operation of unmanned aerial vehicles and consultation relating thereto; providing technology information relating to imagery; online nondownloadable books, white papers, research papers, instruction books, tutorials, treatises and educational games, all in the fields of photography, videography, technology, use of imagery, 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, agriculture, and products IN THE NATURE OF {SPECIFY GOODS}, consulting and services related thereto IN THE NATURE OF {SPECIFY TYPES OF CONSULTING SERVICES AND RELATED SERVICES IN CLASS 41}; obtaining information and 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}, using aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies; obtaining information and providing information and analysis relating to imagery of building structures, roofs, other features of building structures, property, terrain, and other objects and conditions, gathered by manned and unmanned aerial systems

Class 42: Providing temporary use of online non-downloadable software FOR {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing an interactive website featuring technology that allows users to {indicate functions or tasks that the technology enables}; obtaining information and 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}, using aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies; providing measurement information through the collection, manipulation, processing, and/or formatting of images and geographic measurements of geographic locations; providing computer representations of geographic locations created from aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies; providing three dimensional imagery and 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}; remote measuring services for building structures, roofs, property, other features of building structures, terrain, and other objects IN THE NATURE OF {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}, using aerial, terrestrial, satellite and geospatial imagery and other imagery, other remote sensing technologies, and computer software; obtaining information and imagery, and providing information, imagery, and analysis, relating to weather, natural hazards, climate, and natural disasters, for use in building inspections, risk assessment, hazard assessment, 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 nondownloadable software for use in connection with aerial, terrestrial, satellite and geospatial imagery and other imagery 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS; 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 imagery and other imagery 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 and conditions; providing temporary use of online nondownloadable software for risk assessment, analysis and management and hazard assessment, analysis and management; providing temporary use of 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 imagery, map images, and geospatial data; providing an interactive website featuring information, imagery, and analysis relating to building structures, roofs, other features of building structures, property, terrain, other objects IN THE NATURE OF {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS, weather, climate, and natural disasters; providing an interactive website featuring information, imagery, and analysis relating to natural resources, engineering, weather, and climate; providing an interactive website featuring information, imagery, and analysis relating to forensic analysis; providing information, imagery, and analysis relating to natural resources, engineering, weather, and climate, astronomy and space exploration RESEARCH; providing information, imagery, and analysis relating to forensic analysis; obtaining information and 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 {SPECIFY TYPES} and conditions IN THE NATURE OF {SPECIFY TYPES OF CONDITIONS}, 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 catastrophic 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 imagery 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 other objects IN THE NATURE OF {SPECIFY TYPES OF OBJECTS} 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 {SPECIFY TYPES OF OBJECTS}; 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 IN THE NATURE OF {SPECIFY TYPES OF EVENTS AND CONDITIONS}; 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 imagery 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 other objects IN THE NATURE OF {SPECIFY TYPES OF OBJECTS} 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 imagery 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 imagery and other imagery 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 imagery and outputs from sensory and detection technologies in the fields of energy and natural resources, agriculture, mining, transportation, supply chain, engineering, weather and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, astronomy and space exploration 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 imagery and other imagery 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; obtaining and providing information and imagery 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

 

Class 44: Obtaining and providing information and imagery on agriculture IN THE NATURE OF {SPECIFY SUBJECT MATTER} 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, imagery, and analysis relating to agriculture; providing information, imagery, and analysis relating to agriculture IN THE NATURE OF {SPECIFY SUBJECT MATTER}

 

Class 45: Home and vehicle security monitoring using sensors; electronic monitoring and reporting of status and conditions in residential and commercial buildings and in vehicles using computers or sensors; obtaining and 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, imagery, and analysis relating to law enforcement, emergency services; providing an interactive website featuring information, imagery, and analysis relating to fraud detection; providing information, imagery, and analysis relating to law enforcement, emergency services IN THE NATURE OF {SPECIFY SUBJECT MATTER, e.g., emergency response to communities}; providing information, imagery, and analysis relating to fraud detection

 

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

               

The application identifies goods and services that are classified in at least eleven classes; however, applicant submitted fees sufficient for only eight classes.  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.

 

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

 

The application identifies goods and 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 fees 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 fees sufficient for only eight 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 for responding to a refusal and should consider such 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.

 

Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely 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.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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 $50 per international 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 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/5/2016 FOR U.S. APPLICATION SERIAL NO. 86919485

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/5/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.