Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87611116 ISO DATACUBE(Standard Characters, see http://uspto.report/TM/87611116/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Compilation and analysis of data in the field of insurance
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Compilation and analysis of data in the field of insurance; 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; providing databases and information, namely, databases featuring insurance premium and loss information used to evaluate insurer performance and profitability for commercial useClass 035 for Compilation and analysis of data in the field of insurance; 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; providing databases and information, namely, databases featuring insurance premium and loss information used to evaluate insurer performance and profitability for commercial use
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Providing databases and information in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; providing databases and information used to analyze insurance and financial risk; providing databases and information about property damage, property loss, weather events, and catastrophes, for insurance purposes; providing databases and information to assist with insurance underwriting and insurance and financial analysis; insurance analysis services; and providing ratings information used to evaluate insurance risk; providing databases and information about insurer performance and profitability, and insurance premium and loss trends
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing databases and information in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; Providing information and databases featuring information about insurance matters, namely, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; providing databases and information used to analyze insurance and financial risk; providing information and databases featuring information about insurance matters, namely, analysis of insurance and financial risk; providing databases and information about property damage, property loss, weather events, and catastrophes, for insurance purposes; providing information and databases featuring information about insurance matters, namely, property damage, property loss, for insurance purposes; providing databases and information to assist with insurance underwriting and insurance and financial analysis; providing information and databases featuring information about financial and insurance matters, namely, insurance underwriting and insurance and financial analysis; insurance analysis services; 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; and providing ratings information used to evaluate insurance risk; and providing information and databases featuring information about insurance matters, namely, insurance premium and loss trends; providing databases and information about insurer performance and profitability, and insurance premium and loss trendsClass 036 for 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, 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; and providing information and databases featuring information about insurance matters, namely, insurance premium and loss trends
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services featuring software 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 with information about property damage, property loss, weather events, and catastrophes, for insurance purposes; software as a service (SAAS) services featuring software with information to assist with insurance underwriting and insurance and financial analysis; software as a service (SAAS) services featuring software with ratings information used to evaluate insurance risk; software as a service services (SAAS) featuring software with information about insurer performance and profitability, and insurance premium and loss trends
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring software in the fields of insurance, insurance analytics, insurance loss, insurance coverage, insurance risk, and insurance premiums; 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 with 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, about property damage, property loss, weather events, and catastrophes, for insurance purposes; software as a service (SAAS) services featuring software with information to assist with insurance underwriting and insurance and financial analysis; 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 (SAAS) services featuring software with ratings information used to evaluate insurance risk; 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; software as a service services (SAAS) featuring software with information about insurer performance and profitability, and insurance premium and loss trends; providing databases and information about weather events, and catastrophes, namely, hurricanes, other natural hazards, and other perils, for insurance purposesClass 042 for 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, other natural hazards, and other perils, for insurance purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/00/2002 and first used in commerce at least as early as 02/00/2002 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 05/04/2018
Signatory's Name: Michael R. Friscia
Signatory's Position: Attorney of Record, NJ Bar Member

Signatory's Phone Number: 973-848-8308

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87611116
Internet Transmission Date: Fri May 04 18:04:52 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201805041804522954
28-87611116-510c76e86294982b7774bec5d45d
8b22b832aeb5d649c4e438655f8d7d653dc-N/A-
N/A-20180504174825946373