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.  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: 5/14/2018

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on May 4, 2018.

 

The following requirements are now made FINAL: clarification of identification and classification of services; disclaimer requirement; requirement for additional information.  See 37 C.F.R. §2.63(b).

 

Clarification of Identification and Classification of Services Required

 

In this case, the application originally identified the goods as follows:  “providing downloadable data files with ratings information used to evaluate insurance risk.”  The proposed amendment could include information other than ratings, and thus could exceed the scope of the original.

 

“insurance analysis services, namely benchmarking of insurance risk selection, analysis for use in insurance underwriting and pricing of insurance, insurance segment analysis, insurance profitability analysis, and analysis used for strategic planning relating to insurance, all for use by insurance companies, insurance brokers, and others in the insurance industry” in International Class 35 and “insurance analysis services namely, benchmarking of insurance risk selection, analysis for use in insurance underwriting and pricing of insurance, insurance segment analysis, insurance profitability analysis, and analysis used for strategic planning relating to insurance” in International Class 36 is too broad because it could include services in multiple classes, including record keeping for insurance risk management, preparation of financial statements in Class 35 and underwriting, premium computation, and financial analysis in International Class 36.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The wording “providing databases and information, namely, databases featuring insurance premium and loss information used to evaluate insurer performance and profitability for commercial use” in the identification of services for International Class 35 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. Statistical evaluation of insurance claim performance is in International Class 35, and insurance claim assessment is in International Class 36.

 

The wording “providing databases and information about weather events, and catastrophes, namely, hurricanes, other natural hazards, and other perils, for insurance purposes” in the identification of services is indefinite and must be clarified to specify the types of natural hazards and other perils.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following amended identification, if accurate:

 

International Class 35:  Compilation and analysis of data in the field of insurance; insurance analysis services, namely, ___ [specify type of analysis in this class, e.g., financial recordkeeping for insurance risk management and regulatory compliance, statistical evaluation of insurance claims performance measures for others],  for use by insurance companies, insurance brokers, and others in the insurance industry; providing databases and information, namely, databases featuring ___ [specify topic in this class, e.g., statistical evaluations of insurance claim performance measures] to evaluate insurer performance and profitability for commercial use

 

International Class 36:  Providing information and databases featuring information about insurance matters, namely, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; providing information and databases featuring information about insurance matters, namely, analysis of insurance and financial risk; providing information and databases featuring information about insurance matters, namely, property damage, property loss, for insurance purposes; providing information and databases featuring information about financial and insurance matters, namely, insurance underwriting and insurance and financial analysis; insurance analysis services namely, ___ [specify type of analysis in this class, e.g., insurance premium rate computing, insurance underwriting consultation, and financial analysis for insurance purposes]; and providing information and databases featuring information about insurance matters, namely, insurance premium and loss trends

 

International Class 42:  Software as a service (SAAS) services featuring software for creating reports and visuals, and accessing and manipulating information, in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; software as a service (SAAS) services featuring software used to analyze insurance and financial risk; software as a service (SAAS) services featuring software for creating reports and visuals, and accessing and manipulating information, about property damage, property loss, weather events, and catastrophes, for insurance purposes; software as a service (SAAS) services featuring software for creating reports and visuals, and accessing and manipulating information, to assist with insurance underwriting and insurance and financial analysis; software as a service services (SAAS) featuring software for creating reports and visuals, and accessing and manipulating information, about insurer performance and profitability, and insurance premium and loss trends; providing databases and information about weather events, and catastrophes, namely, hurricanes and ____ [specify type of catastrophes in this class, e.g., earthquakes, storms and floods] for insurance purposes

 

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.

 

Disclaimer Required

 

Applicant must disclaim the wording “DATACUBE” because it merely describes features of applicant’s services and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

The wording "DATACUBE" is used  is used to describe a multi-dimensional representation of information.  See evidence attached to the January 31, 2018 office action:

 

"A "data cube" is "an information storage model. In the context of a data warehouse, data cubes are evolved as a result of extractions from operational data. They can be assumed to be static entities that do not change, and may not be altered or even built from query data. A cube cache is used to store them in memory. If grown beyond three dimensions, the cube becomes a hypercube."  Online Dictionary of Multimedia and Internet Applications (http://search.credoreference.com/content/entry/wdmia/data_cube/0). 

 

"Data cubes are multidimensional extensions of 2-D tables, just as in geometry a cube is a three-dimensional extension of a square. The word cube brings to mind a 3-D object, and we can think of a 3-D data cube as being a set of similarly structured 2-D tables stacked on top of one another."  (http://www.computerworld.com/article/2564238/business-intelligence/data-cubes.html)

 

"Kyvos 4.0 delivers unmatched levels of scalability, performance and support for concurrent users, enabling organizations to provide self-service, interactive business intelligence (BI) on big data for all of their users across the enterprise. With breakthrough technology, Kyvos 4.0 allows BI analysts to create and store multidimensional data cubes that contain an unprecedented amount of information. By constructing a BI Consumption Layer, organizations can easily manage and store cubes and run queries with instant response times for previously unachievable levels of interactive performance and analysis." (http://www.prnewswire.com/news-releases/kyvos-40-establishes-breakthrough-levels-of-scale-and-performance-300504404.html)

 

"We developed McLeod IQ to provide insight into key indicators that are important to your business. With IQ Solutions, you have the ability to access and analyze LoadMaster, PowerBroker and 3rd Party data simply using Microsoft Excel, or with a wide variety of popular reporting tools. McLeod IQ utilizes the Microsoft Business Intelligence stack to create a multidimensional cube that aggregates your important metric data in a way that is easy for you to understand, report, and analyze. The data cube architecture shows your important KPIs against any type of dimensional data (i.e.: Customer/Location/Driver), thereby showing you relationships and any correlations that are not normally easy to see from standard reports." (http://www.mcleodsoftware.com/mcleod-iq-3.aspx)

 

The wording merely describes that the data and databases applicant complies, analyzes and provides could include information presented in a data cube format, and that the software could be for creating and analyzing data cubes.  See applicant’s specimen, describing the goods/services as “a tool for exploring various combinations of ISO aggregate database elements so you can examine the interaction between different types of information.” 

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “DATA CUBE” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

Additional  Information Required

 

The January 31, 2018 office action required applicant to provide specific information about the goods and services.  Applicant did not respond to this requirement, which is now made FINAL.  37 C.F.R. §2.63(b).

 

Specifically, applicant must submit the following, for each class of services in the application:

 

1.         Print and/or online advertising for the services;

2.         Print and/or online instructions for using the services; and

3.         Screenshots of the “Tableau DataCube” listed in the last column of the table shown on the specimen and indicated by the “View” option.

 

If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and services feature new technology and no information regarding competing goods and services is available, applicant must provide a detailed factual description of the goods and services.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Final Action Response Guidelines

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

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.

 

 

 

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.

 

 

 

/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 5/14/2018 FOR U.S. APPLICATION SERIAL NO. 87611116

 

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 5/14/2018 (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.