Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 10/23/2018

 

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a).  The following identification requirement made final in the Office action dated May 14, 2018 is maintained and continue to be final.  See TMEP §§715.03(a)(ii)(B), 715.04(a).  The Section 2(e)(1) refusal is withdrawn based on the amendment of the application to Section 2(f).  See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

Clarification of Identification and Classification of Goods and Services Required

 

The proposed amended wording “insurance analysis services namely, analysis of insurance risk information, analysis of insurance information for use in insurance underwriting and premium computation, and financial analysis of insurance profitability” in International Class 36 is indefinite and too broad because “analysis of insurance risk information” could include business risk analysis in International Class 35 and financial risk 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 about weather events, and catastrophes, namely, hurricanes, tornadoes, wildfires and other perils, including storms, fire, theft, water damage, and other natural or manmade disasters and events causing loss or damage to property, and acts of terrorism, for insurance purposes” in International Class 42 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).  In this case the proposed amended wording “theft” and “terrorism” are not types of weather events and catastrophes. 

 

Sample Amended Identification

 

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

 

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, tornadoes, wildfires and other perils in the nature of ___ [specify type, e.g., storms and flooding], including storms, fire, theft, water damage, and other natural or manmade disasters and events causing loss or damage to property, and acts of terrorism, 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).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

Response and Partial Abandonment

 

If applicant does not resolve these outstanding issues within the time remaining in the response period, and/or file a timely notice of appeal, the following services will be held abandoned and deleted from the application: 

 

International Class 36:  insurance analysis services namely, analysis of insurance risk information, analysis of insurance information for use in insurance underwriting and premium computation, and financial analysis of insurance profitability

 

International Class 42:  providing databases and information about weather events, and catastrophes, namely, hurricanes, tornadoes, wildfires and other perils, including storms, fire, theft, water damage, and other natural or manmade disasters and events causing loss or damage to property, and acts of terrorism, for insurance purposes

 

See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).

 

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

 

International Class 35:  Compilation and analysis of data in the field of insurance; insurance analysis services, namely financial recordkeeping for insurance risk management and regulatory compliance, statistical evaluation of insurance claims performance measures for others, all for use by insurance companies, insurance brokers, and others in the insurance industry; providing databases and information, namely, databases featuring 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; providing information and databases featuring information about insurance matters, namely, insurance premium and loss trends; providing databases and information, namely, databases featuring insurance claim assessment information to evaluate insurer performance and profitability for commercial use

 

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

 

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3).  The filing of a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). 

 

 

/April Roach/

April Roach

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@uspto.gov

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/23/2018 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 10/23/2018 (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.