To: | Insurance Services Office, Inc. (mfriscia@mccarter.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87611107 - ISO DATACUBE - 097171-00012 |
Sent: | 11/6/2017 1:23:49 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87611107
MARK: ISO DATACUBE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Insurance Services Office, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 11/6/2017
The application has been reviewed by the assigned trademark examining attorney.
Search Results
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).
List of Issues Requiring Response
Applicant must respond timely and completely to the following issues:
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Clarification of Identification and Classification of Goods and Services Required
Applicant may adopt the following amended identification, if accurate:
International Class 9: Downloadable electronic data files featuring information in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; Downloadable electronic data files featuring information used to analyze insurance and financial risk; Downloadable electronic data files featuring information about property damage, property loss, weather events, and catastrophes, for insurance purposes; Downloadable electronic data files featuring information to assist with insurance underwriting and insurance and financial analysis; Downloadable electronic data files featuring ratings information used to evaluate insurance risk; Downloadable electronic data files featuring information about insurer performance and profitability, and insurance premium and loss trends
International Class 35: Providing online retail store services featuring downloadable data files with information in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; Providing online retail store services featuring downloadable data files with information used to analyze insurance and financial risk; Providing online retail store services featuring downloadable data files with information about property damage, property loss, weather events, and catastrophes, for insurance purposes; providing downloadable data files with information to assist with insurance underwriting and insurance and financial analysis; Providing online retail store services featuring downloadable data files with ratings information used to evaluate insurance risk; Providing online retail store services featuring downloadable data files with information about insurer performance and profitability, and insurance premium and loss trends
International Class 38: Providing telecommunications transmission of digital downloadable data files with information in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; Providing telecommunications transmission of digital downloadable data files with information used to analyze insurance and financial risk; Providing telecommunications transmission of digital downloadable data files with information about property damage, property loss, weather events, and catastrophes, for insurance purposes; Providing telecommunications transmission of digital downloadable data files with information to assist with insurance underwriting and insurance and financial analysis; Providing telecommunications transmission of digital downloadable data files with ratings information used to evaluate insurance risk; Providing telecommunications transmission of digital downloadable data files with information about insurer performance and profitability, and insurance premium and loss trends
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
(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). The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only one class. 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).
See 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.
Response Guidelines
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.