Reconsideration Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  December 20, 2019

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Clarification of Identification of Services Required.  The requirement for clarification of the identification continues to be final. See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

“Insurance rating services and information relative thereto, namely, benchmarking expected loss for risk assessment purposes”: Applicant argues that the present application originally specified “insurance rating services and information relative thereto.” This wording was amended to “Insurance rating services and information relative thereto, namely, benchmarking expected loss for financial risk assessment purposes, and computing and providing information about computation of insurance premium information” in the May 28, 2019 office action response and accepted in the May 30, 2019 final action. Thus, adding this wording is not necessary as it is duplicative of the previously accepted entry. TMEP §1402.01(a).

 

“Providing vehicle history reports, namely, providing reports about vehicle repairs, damage, accidents and ownership for insurance risk evaluation purposes”: On May 28, 2019 applicant requested that the wording “ Providing vehicle history reports, namely, providing reports about vehicle repairs, damage, accidents and ownership for insurance risk evaluation purposes” be transferred based on Serial No. 87635021. This application originally specified report services: “Analyzing computer data, and preparing reports of information generated during the operation of vehicles, instruments and machinery for business purposes; Preparing electronic reports for business or commercial purposes in the fields of insurance, insurance services, insurance management and analysis, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, and financial and investment analysis; Preparing electronic reports for business strategic and operational purposes in the fields of insurance, insurance services, insurance management and analysis, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, and financial and investment analysis.” Preparation of reports for business and commercial purposes is a different service than preparing reports “for insurance risk evaluation purposes” and thus this wording cannot be transferred. TMEP §1402.08.

 

Applicant now argues that the wording “providing vehicle history reports” was in the original identification for the present application, however, this wording was subsequently amended to “Providing vehicle history reports, namely, providing reports about damage and repair appraisal insurance risk evaluation purposes.” The proposed amendment is not accepted as it includes information about subjects such as ownership and accidents that exceeds the scope of the accepted amendment. 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. 

 

“Providing information in the field of natural resources investment opportunities” On May 28, 2019 applicant requested that the wording “Providing information in the field of natural researches investment opportunities” be transferred based on Serial No. 87635021. This application originally specified: “Compilation and analysis of data in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather, environment and climate, cartography, insurance, banking, finance, construction, real estate, law enforcement, emergency services, government, real estate, and geopolitics; Providing in-person and on-line forums in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, environment and weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing business information in the fields of energy and energy efficiency, agriculture, natural resources, and geopolitical issues.”  The services of compilation and analysis of data is not the same as provision of information, and the topic of natural resources data is different from investment opportunities information that is in the field of natural resources. The service of provision of forums in the fields of natural resources is a different service than providing information about investments in the field of natural resources.  The provision of business information in the field of natural resources is different from information about investment opportunities information in the field of natural resources. TMEP §1402.08.

 

Applicant now seeks to transfer this wording based on Serial No. 87635114, “providing information, imagery, and analysis relating to natural resources, weather, environment, climate and forensic analysis.” This transfer is not permitted as provision of information about investments is a different service than providing information about natural resources. TMEP §1402.08.

 

“Consulting about managing insurance risk relating to catastrophes”: On May 28, 2019 applicant requested that the wording “consulting about insurance risk relating to catastrophes” be transferred from Serial No. 87635084. This application specified the services of “Rental of unmanned aerial vehicles; Providing geographic information through the collection, manipulation, processing and formatting of images and geographic measurements of geographic locations; Providing an interactive website featuring information, imagery, and analysis relating to transportation, cartography, and geographical information systems; Providing information, imagery, and analysis relating to transportation, cartography, and geographical information systems; Arrangement and provision of national and international medical transport services for patients by air, road or sea; air ambulance transport services; arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Travel assistance services, namely assistance with visas and embassy referrals, assistance with lost passports, tickets, baggage, wallets, and credit cards, providing emergency cash advances, assistance with travel documents, assistance with legal referrals for travelers, assistance with relaying emergency messages, providing emergency travel arrangements, assistance at ports and airports, and assistance with interpreters,” none of which are about insurance risk management. TMEP §1402.08.

 

Applicant now seeks to transfer this wording from Serial No. 87635100, which, at the time of the request, includes: “ Educational services, namely, providing in-person and on-line training courses, seminars and workshops and providing round table and panel discussions, in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture, and consulting in the fields of photography and videography.”  This amendment is not acceptable as the subject of the consulting in the co-pending application is photography and videography, not insurance risk. TMEP §1402.08.

 

“Preparation of reports with information in the field of financial risks of property loss and damages associated with wildfires”: This wording is indefinite; to be in International Class 36 the subject must be financial risk. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt the following amended identification, if accurate:

 

International Class 36:  Providing information about property and casualty insurance and underwriting risks, risk assessment and evaluation, and risk management, for use by insurance companies in handling insurance claims and insurance investigations, about pending and historical insurance claims, and the adequacy of insurance coverage; Providing insurance information relating to changes in automobile insurance policies; Insurance rating services and information relative thereto, namely, benchmarking expected loss for financial risk assessment purposes, and computing and providing information about computation of insurance premium information; Providing insurance appraisals and evaluations, namely, appraisals of personal and real property insurance claims, and repair cost appraisal; Providing real-time insurance claims processing reports to insurance carriers and restoration contractors via a secure online website; Providing insurance claims processing featuring automated claims administration management, tracking, and monitoring of all stages of insurance claims handling; Insurance consulting in the nature of evaluating issued insurance policy information in conjunction with third party data libraries and proprietary databases and assessing rating factor errors in premium auditing to enhance actuarial analysis, and determining for others the accuracy and validity of insurance policyholders data used for the calculation of insurance policy premiums; Performing insurance premium underwriting services for others for all types of insurance; Providing reports for mortgage originators and lenders containing information in making decisions about loans; Providing insurance information regarding the data of insurance policy transactions to comply with requirements to notify lien holders, secured parties, or mortgagees of changes in insurance coverage or policies; Providing information in the field of insurance claims, namely, assessment of insurance claims, appraisals of insurance claims, and adjustment of insurance claims; Providing information on property damage and terrain, namely, financial appraisal of damages and information about insurance and financial risks relating to damage to property and terrain, to assist in insurance claims administration and analysis, insurance and financial risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis; Providing an interactive website featuring information and analysis namely, information in the fields of insurance, banking, and real estate; Providing an interactive website featuring information and analysis namely, information in the fields of insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; Obtaining and providing information on facilities and structures in the field of energy, namely, financial appraisal information, to assist in investment analysis, real estate valuation, and real estate investment and analysis; Providing databases and information in the field of insurance, insurance services, insurance analytics, insurance claims, insurance management and analysis, namely, claims assessment, claims adjustment, actuarial information, insurance underwriting information, insurance claim appraisal history and asset valuation appraisal history, insurance coverage verification, financial risk management and analysis, financial risk analytics, financial risk calculation, financial risk mitigation, financial risk forecasting, financial risk assessment, financial and investment analysis; Providing databases and information in the field of claims assessment, claims adjustment, actuarial information, insurance claim appraisal history and asset valuation appraisal history insurance coverage verification, and real estate and real property appraisals, all to assist with insurance underwriting; Insurance underwriting information services; Insurance analysis services, namely, assessing insurance claims, and analyzing insurance information for purposes of financial risk assessment; Providing online databases using predictive modeling to allow insurance carriers and insurance underwriters to rate and underwrite insurance policies; Providing information and analytics on financial risk relating to specific geographic regions, weather, climate and environmental events, other catastrophes, world events, and other loss events; Providing insurance and financial risk analysis information and information for investors, manufacturers, insurance carriers, commodities traders, investors, and those in the supply chain, in the field of climate, environment, world events, and disaster risk management; Providing financial risk and investment data regarding climate, environment, world events, and disasters for use in the insurance and financial fields; Consulting and information in the field of insurance; Providing information and analytics regarding property locations and characteristics, namely, insurance risks derived from property locations for purposes of insurance and financial risk assessment; Providing insurance ratings information, namely, insurance data analyzing insurance loss history and financial information used to evaluate insurance and financial risk; Consulting and advisory services in the fields of financial risk assessment, financial and investment analysis; Financial consultancy and financial risk management; Providing an online database that contains a glossary of technical terms in the field of insurance, covering loss, damage or theft of heavy construction equipment and that is offered via a global communications network for use by insurance companies; Banking consultation; Bankruptcy management, namely, debt management services and debt collection consulting and advisory services; Providing and analyzing financial data, bankruptcy data, and data about debtors; Financial portfolio valuation and analysis services; Analysis of credit and financial risk; Financial counseling services; Insurance claims administration; Insurance brokerage services; services to insurance companies, intermediaries and sellers in the nature of assessment and management of medical insurance underwriting risk; Services to insurance companies, intermediaries and sellers in the nature of claims adjustments on insurance products; Creation and administration of trusts providing healthcare benefits; Providing information and databases in the fields of merchant risk assessment and merchant compliance with customer, industry and/or regulatory obligations, all used to evaluate insurance and financial risk; Providing information about vehicle insurance and underwriting risks, risk assessment and evaluation, and risk management; Providing information about vehicles, namely, information about damage and repair appraisal and repair cost, for insurance and financial purposes; Providing vehicle history reports, namely, providing reports about damage and repair appraisal insurance risk evaluation purposes; Providing information on and analysis of fire protection efforts, namely, insurance and financial risk associated with fire ratings of local communities, to assist in underwriting of insurance and financial services products; Providing ratings information relating to fire protection efforts, namely, insurance risk assessment information used to evaluate insurance and financial risk; Providing information on and analysis of wildfires and risk associated with wildfires namely, insurance risk information, and ratings information relating to wildfires namely, insurance risk assessment information, used to evaluate risk, all of the foregoing used to evaluate insurance and financial risk; Consulting and advisory services in the field of insurance; Providing information in the field of insurance claims risk management, namely, information on weather and natural hazards; Insurance risk assessment relating to the effects of weather and natural hazards; Providing insurance and financial risk analysis information relating to energy service interruption; providing information in the field of financial risk analysis associated with energy service interruption via the internet; Providing information in the field of insurance, namely, risk analysis information on weather and other perils; Providing on-line computer databases featuring risk analysis information about perils in the nature of financial loss events; Providing information over a global computer network in the field of financial risk analysis information about weather and other perils; Providing insurance underwriting and insurance rating data, namely, insurance and financial risk rating data for insurance use, via an online database available on the internet; Compilation and analysis of data for financial purposes to assist in financial risk assessment, and financial and investment analysis; Providing insurance and financial risk information, namely, information related to weather events and other catastrophes in the nature of information about the effects and potential effects of such events on premiums, and estimates of insured loss and actual insured loss resulting from catastrophic events, to assist in insurance claims management and analysis, financial risk management and analysis, financial risk assessment, and financial and investment analysis; Providing on-line databases featuring insurance and financial risk information, namely, information related to weather-related events and other catastrophes in the nature of information about the effects and potential effects of such events on premiums, and estimates of insured loss and actual insured loss resulting from catastrophic events, all for assessing insurance and financial risk; Providing insurance to value portfolio analysis; Providing estimates of the costs of building repair, namely, repair cost evaluation; Compilation and analysis of financial data in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather, environment and climate, cartography, insurance, banking, finance, construction, real estate, law enforcement, emergency services, government, real estate, and geopolitics, all for financial analysis; Compiling and analyzing data for financial analysis purposes; Compilation and analysis of ratings information, namely, insurance risk assessment in the field of wildfires, used to evaluate risk; Providing risk analysis ratings information, namely, insurance risk assessment, to the insurance industry relating to wildfires used to evaluate risk; Providing online databases and information about energy, namely, insurance risk management and analysis, insurance risk analysis, and energy investment opportunity evaluations; Providing consulting and advisory services in the field of energy, namely, insurance risk management and analysis, insurance risk analysis, and energy investment opportunity evaluations; Obtaining information, and providing information and analysis, namely, insurance claims assessment information and analysis and repair cost evaluation information and analysis for building structures, roofs, other features of building structures, structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, to assist in insurance claims management and analysis; Providing electronic notifications with information on bankruptcy matters, namely, provision of financial notifications in the field of bankruptcy via email alerts; Consulting and services related thereto in the nature of consultation in the fields of insurance and real estate; Providing online websites in the field of insurance, namely, insurance and financial risk management and analysis, insurance and financial risk analytics, insurance and financial risk calculation, insurance and financial risk mitigation, insurance and financial risk forecasting, insurance and financial risk assessment and insurance and financial and investment analysis; Providing on-line information in the field of property and casualty insurance loss, namely, claims auditing; Providing on-line information in the field of real estate appraisal and valuation for use as an automated valuation model for real estate property assessment and creation of real property valuation reports for others; Providing on-line information in the field of claims administration for managing workers compensation claims; Providing on-line information, namely, providing online financial calculators for use in executing residential insurance and valuation calculations; Providing on-line information in the field of personal and real estate appraisals and repair cost evaluation to receive, track, document and manage insurance claims, property valuations, repair estimates and property replacement costs; Providing on-line information in the fields of insurance, insurance claims processing and administration used in insurance claims handling and that allows for collaboration among insurance underwriters, insurance claims personnel and insurance policyholders; Providing on-line information in the field of repair cost evaluation for cost estimating in the building, construction, repair, restoration, maintenance and remodeling industries; Providing on-line information in the field of insurance and financial risk assessment, insurance and financial risk analysis and insurance and financial risk management; Providing on-line information in the field of insurance claims assessment; Providing information about insurance and prospective insureds and reports relating to insurance, namely, information about insurance claims assessment, claims adjustment, actuarial information, insurance underwriting information, insurance claims history information, asset valuation and history, and insurance coverage verification; Providing estimates of the costs of building repair, restoration, and reconstruction, namely, providing replacement cost valuation; Consulting services in the field of energy, namely, consulting about energy investment opportunity evaluations; Providing online databases, information and analysis in the field of energy, namely, insurance risk analysis and energy investment opportunity evaluations, all the aforesaid services relating to the energy, chemicals, metals, mining and commodities industries; Providing information and online databases in the field of insurance, namely, insurance risk assessment and insurance claims  appraisals for real property; Insurance rating services and information relative thereto, namely, benchmarking expected loss for risk assessment purposes; Providing vehicle history reports, namely, providing reports about vehicle repairs, damage, accidents and ownership for insurance risk evaluation purposes; Providing on-line information in the field of replacement cost valuation for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; Providing an interactive website featuring information about natural resources investment opportunities; Providing information in the field of natural resources investment opportunities; Providing information about insurance and potential insured, namely, assessment of insurance claims; Consulting about managing insurance risk relating to catastrophes; Preparation of reports with information in the field of financial risks of property loss and damages associated with wildfires

 

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.

 

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).

 

Appeal resumed.  The Trademark Trial and Appeal Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

 

/April Roach/

April Roach

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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 20, 2019 for

U.S. Trademark Application Serial No. 87635040

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/April Roach/

April Roach

Examining Attorney

Law Office 115

571-272-1092

April.Roach@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 20, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”