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 PARTIAL 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: 11/19/2018

 

The amendment to allege use has been reviewed by the assigned trademark examining attorney.  The amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c); however, it does not satisfy all statutory requirements.  See TMEP 1104.10. 

 

The request for reconsideration dated November 15, 2018 has been reviewed.  The Section 2(e)(1) refusal is withdrawn based on the amendment to the Supplemental Register.  The identification requirement is continued and maintained.

 

Clarification of Identification and Classification of Goods and Services Required

 

The proposed amended wording “software for of insurance data and assessment of insurance risk” in International Class 9 is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).  The application originally specified “software for predictive modeling and analysis of insurance data and assessment of insurance risk.”  The proposed amendment is not limited to any specific function of the software and thus is broader in scope than the original. 

 

The proposed amendment “providing information, namely, information about the history of energy facilities, to assist in insurance underwriting and the analysis of insurance risk” in International Class 35 and “providing information, namely, information about energy production processes and industrial equipment, to assist in insurance underwriting and the analysis of insurance risk” in International Class 36 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b). 

 

The proposed amendment “Providing an interactive website featuring information about ownership, installation, repair and maintenance of equipment for the insurance, energy and power, industries” in International Class 37 and “providing an interactive website featuring information about energy operations for the insurance industry” in International Class 42 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The subject matter of the information being provided determines classification of these services.  TMEP §1402.11(a)(ii). 

 

A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services.  Wording in italic type represents items in the identification that require clarification.  Bold italic type indicates changes to applicant’s original identification.  Strikethrough marking indicates wording that must be deleted.  Wording in [brackets] following a fill in the blank provides guidance and examples of acceptable amendments.  For example, if the original identification is “clothing,” and the suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing, namely, shirts, pants and coats” in the response to the office action. 

 

International Class 9:  Software for accessing information about insurance, insurance underwriting, risk assessment, hazard assessment, information on catastrophic events, and information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data; software for risk management and analysis; software for analysis of insurance data and assessment of insurance risk; downloadable electronic reports and data files relating to insurance, insurance underwriting, risk assessment, risk management and analysis, hazard assessment, catastrophic events, and aerial, terrestrial, and satellite imagery, photographic data, and geospatial data

 

International Class 35:  Compiling and analyzing data in the field of insurance; compilation and analysis of business information for use in the insurance and financial industries; providing business information relating to the energy and power, industries; compilation and provision of business and commercial information; providing information, namely, ____ [specify subject in this class, e.g., information about the business operations history of energy facilities] to assist in insurance underwriting and the analysis of insurance risk; providing analytics in the field of insurance, namely, analysis of business risk used to make decisions about insurance underwriting and insurance claims

 

International Class 36:  Providing analytics in the field of insurance, namely, analysis of financial risk used to make decisions about insurance underwriting and insurance claims; providing information, namely, ____ [specify subject in this class, e.g., information about financing of energy production equipment] to assist in insurance underwriting and the analysis of insurance risk; providing information and analytics regarding insureds and potential insureds for insurance and risk assessment; providing on-line databases in the field of insurance, for insurance risk assessment; providing information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data, for insurance risk assessment; providing information and on-line databases featuring insurance and financial risk information, for assessing insurance and financial risk; insurance underwriting and administration services, namely, analysis of statistics and data concerning risks to assist with underwriting; providing insurance and financial assessments of loss and potential loss resulting from catastrophes, to assist in insurance claims management and analysis, insurance risk management and analysis, financial risk assessment, and financial and investment analysis; providing an interactive website featuring information about insurance and financial risk for the insurance, energy and power, industries; providing information, namely, appraisal information for insurance claims and insurance underwriting to assist in insurance underwriting and the analysis of insurance risk

 

International Class 37:  Providing an interactive website featuring information about ownership, installation, repair and maintenance of equipment for the insurance, energy and power, industries

 

International Class 39:  Providing an interactive website featuring information about energy transmission and distribution for the energy and power industries; technical data analysis, namely, analysis of energy transmission and distribution data in the fields of energy and power

 

International Class 40:  Providing an interactive website featuring information about energy and power generation for the energy and power, industries; technical data analysis, namely analysis of energy and power generation data in the fields of energy and power

 

International Class 42:  Providing online non-downloadable software for use in risk management, risk assessment, and risk analysis, for insurance risk assessment; providing online non-downloadable software for accessing information about insurance, insurance underwriting, risk assessment, hazard assessment, information on catastrophic events, and information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data; providing online non-downloadable software for risk management and analysis; providing online non-downloadable software for analysis of insurance data and assessment of insurance risk; technical data analysis, namely, analysis of data on weather and catastrophic events, all for use in the fields of insurance, energy and power; providing an interactive website featuring information about ____ [specify subject in this class, e.g., engineering inspection of energy generation facilities] for the insurance industry

 

International Class 45: providing an interactive website featuring information about ____ [specify subject in this class, e.g., safety inspections of energy generation facilities] for the insurance industry

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Multiple Class Applications

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The current fees cover all International Classes (e.g., eight classes).

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is not acceptable for International Classes 35, 36, 37 and 45.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

Specimens Do Not Show Use With Identified Services

 

The specimens submitted with the Amendment to Allege Use are not acceptable for International Classes 35, 36 and 37 as set forth below.

 

Registration is refused because the specimens do not show the applied-for mark in use in commerce in connection with any of the services specified in International Classes 35, 36 and 37 in the amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). 

 

International Class 35:  The brochure is advertising for "a benchmarking and risk scoring platform" with modules, including an application for mapping facilities and comparing risk, and for viewing interconnected assets ("EPIX" currently comprises two modules").  This brochure shows the mark used with a software platform that enable the user to evaluate risk, but not that applicant is providing the identified business information, compilation and analysis services to consumers.

 

International Class 36:  The brochure is advertising for "a benchmarking and risk scoring platform" with modules, including an application for mapping facilities and comparing risk, and for viewing interconnected assets ("EPIX" currently comprises two modules").  This brochure shows the mark used with a software platform that enable the user to evaluate risk, but not that applicant is providing the identified insurance and financial information, compilation and analysis services to consumers.

 

International Class 37:  The brochure is advertising for "a benchmarking and risk scoring platform" with modules, which does not show that applicant provides an interactive website.  The screenshot does not show that the information provided is about installation, repair or maintenance.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Response Guidelines and Partial Abandonment Information

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services will be deleted from the application: 

 

International Class 9:  software for analysis of insurance data and assessment of insurance risk

 

International Class 35:  Compiling and analyzing data in the field of insurance; compilation and analysis of business information for use in the insurance and financial industries; providing business information relating to the energy and power, industries; compilation and provision of business and commercial information; providing information, namely, information about the history of energy facilities, to assist in insurance underwriting and the analysis of insurance risk; providing analytics in the field of insurance, namely, analysis of business risk used to make decisions about insurance underwriting and insurance claims

 

International Class 36:  providing analytics in the field of insurance, namely, analysis of financial risk used to make decisions about insurance underwriting and insurance claims; providing information, namely, information about energy production processes and industrial equipment, to assist in insurance underwriting and the analysis of insurance risk; providing information and analytics regarding insureds and potential insureds for insurance and risk assessment; providing on-line databases in the field of insurance, for insurance risk assessment; providing information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data, for insurance risk assessment; providing information and on-line databases featuring insurance and financial risk information, for assessing insurance and financial risk; insurance underwriting and administration services, namely, analysis of statistics and data concerning risks to assist with underwriting; providing insurance and financial assessments of loss and potential loss resulting from catastrophes, to assist in insurance claims management and analysis, insurance risk management and analysis, financial risk assessment, and financial and investment analysis; providing an interactive website featuring information about insurance and financial risk for the insurance, energy and power, industries; providing information, namely, appraisal information for insurance claims and insurance underwriting to assist in insurance underwriting and the analysis of insurance risk

 

International Class 37: Providing an interactive website featuring information about ownership, installation, repair and maintenance of equipment for the insurance, energy and power, industries

 

International Class 42:  providing an interactive website featuring information about energy operations for the insurance industry

 

The application will then proceed with the following goods and services only:

 

International Class 9:  Software for accessing information about insurance, insurance underwriting, risk assessment, hazard assessment, information on catastrophic events, and information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data;

software for risk management and analysis; downloadable electronic reports and data files relating to insurance, insurance underwriting, risk assessment, risk management and analysis, hazard assessment, catastrophic events, and aerial, terrestrial, and satellite imagery, photographic data, and geospatial data

 

International Class 39:  Providing an interactive website featuring information about energy transmission and distribution for the energy and power industries; technical data analysis, namely, analysis of energy transmission and distribution data in the fields of energy and power

 

International Class 40:  Providing an interactive website featuring information about energy and power generation for the energy and power, industries; technical data analysis, namely analysis of energy and power generation data in the fields of energy and power

 

International Class 42:  Providing online non-downloadable software for use in risk management, risk assessment, and risk analysis, for insurance risk assessment; providing online non-downloadable software for accessing information about insurance, insurance underwriting, risk assessment, hazard assessment, information on catastrophic events, and information on aerial, terrestrial, and satellite imagery, photographic data, and geospatial data; providing online non-downloadable software for risk management and analysis; providing online non-downloadable software for analysis of insurance data and assessment of insurance risk; technical data analysis, namely, analysis of data on weather and catastrophic events, all for use in the fields of insurance, energy and power

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

April Roach

/April Roach/

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@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 11/19/2018 FOR U.S. APPLICATION SERIAL NO. 87552590

 

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 11/19/2018 (or sooner if specified in the Office action).  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.  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 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.