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: 11/26/2018

 

This Office action is in response to applicant’s communication filed on November 13, 2018.  The requirement for clarification of the identification and classification of the services is continued and maintained.

 

Clarification of Identification and Classification of Goods and Services Required

 

The proposed amended wording must be clarified because it is too broad and includes services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular,

 

• “replacement cost valuation” is a financial service in International Class 36
• “providing in-person educational…forums” is and educational service in International Class 41
• providing consulting, information, and databases in the field of insurance risk management is financial service in International Class 36
• providing consulting, information and databases in the field of investment opportunity evaluations is a financial service in International Class 36
• provision of “imagery” could include downloadable images files as goods in International Class 9, the service of providing a website featuring non-downloadable photographs and videos in International Class 41
• provision of information about supply chain management is a business service in International Class 35, theft prevention services are in International Class 45
• assistance with evaluating regulatory issues could include assistance with preparing and filing applications for licenses and permits as a business service in International Class 35 and legal services in International Class 45
• insurance claim auditing is a business service in International Class 35, insurance claims assessments, administration, processing and adjustment is a financial service in International Class 36
• natural resources risk assessment could include business risk assessment in International Class 35, financial risk assessment in International Class 36, and environmental risk assessment in International Class 42
• information about energy extraction is in International Class 37 and must include the type of extraction, energy generation is in International Class 40

 

Applicant is advised that requests to transfer goods and/or services between applications are subject to the following requirements:

 

• In order to transfer goods/services between applications, the applicant must provide the following in the original application:  a request to delete specified goods/services in the original application and specification of the serial number of the application to which the goods/services are to be added. TMEP §1402.08.  Applicant must also file an amendment in the receiving application specifying the goods/services to be added and the serial number of the application from which they are to be moved from.  Id.

 

• Transfers are only permitted if the original application was filed on or before the filing date of the application to which the goods/services are to be moved, the goods/services are properly in a class other than those in the original application, and the application to which they are to be moved includes the proper class, and neither application has been approved for publication.  Id.

 

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:  Subscriptions to a computer service for the insurance industry for providing information relating to changes in insurance coverages and policies and for completing insurance applications with applicant information from existing databases; Providing business risk assessment information to insurance carriers; Providing information in the field of property and casualty insurance claims auditing; Providing referral services for building improvement, remodeling, and repair service providers; Providing building and construction cost assessments and cost-estimating services; Providing health care utilization and review information services regarding health care cost management for cost recovery opportunities and processing of health care information particularly to identify missed or incorrect coding, and quality problems and initiatives; Providing healthcare cost review regarding cost reduction services to insurance organizations and other payors of healthcare claims; Prepayment cost reduction services, namely, clinical cost analysis of suspect claims provided to insurance companies and other payers of health care claims; Providing an online cost-modeling database featuring replacement cost estimates for building structures used in the insurance field for contracting work; Analyzing computer data, and preparing reports of information generated during the operation of vehicles, instruments and machinery for business purposes; Providing estimates of the costs of building repair, restoration, and reconstruction, namely, estimating contracting work and providing replacement cost valuation; Providing pricing information for use in estimating and valuing the costs of construction, remodeling, repair or replacement of residential, commercial, industrial and agricultural structures and the fixtures and contents thereof; Compilation and analysis of business 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; Auditing of insurance claims estimations, namely, insurance claims auditing services; Providing business information in the fields of imagery and geospatial data; Providing in-person educational and promotional 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; Consulting services in the field of energy, namely, for purposes of  consulting about business risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing business information in the fields of energy and energy efficiency, agriculture, natural resources, and geopolitical issues; Business research and data analysis services in the field of drone services; Providing an interactive website featuring information, imagery, and analysis relating to assessment of energy efficiency and business risk management; Providing information, imagery, and analysis in the fields of energy for purposes of, namely, about business risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency, geopolitics, namely geopolitical infrastructure, supply chain logistics management services, and ____ [specify type of government/regulatory service, e.g., assistance with preparation and filing applications for permits and licenses with government regulatory bodies  for purposes of reduction of theft and risk of theft, and , government, namely to assist with evaluating regulatory issues and weather risk management; Providing information, imagery and analysis relating to assessment of energy efficiency and business risk management; Trade information in the field of insurance; Compilation and analysis of business information to assist in risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, financial and investment analysis; Providing business risk assessment information to insurance carriers; Arranging and conducting business conferences; Arranging and conducting business conferences for persons in the business of insurance and risk management; 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; Providing online databases with information in the field of business strategic and operational risk management and analysis, business strategic and operational risk analytics, business strategic and operational risk calculation, business strategic and operational risk mitigation, business strategic and operational risk forecasting; Business strategic and operational risk management services; 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; Marketing consultancy and business risk management provided to financial services institutions; Data integration, namely, data processing services provided to financial services institutions; Business data analysis for measuring the effectiveness of advertisements and targeting consumers; Benchmarking for the financial services industry, namely, providing commercial information and market research information in the field of credit card, debit card, deposit, and other financial Transactions; Business assistance, namely, business management assistance; Business analysis, namely, business management analysis; Business strategy planning services; Business management; Business administration; Business appraisals; Business information; Business investigations; Business management and organization consultancy; Business research; Provision of commercial information; Compilation of information into computer databases; Compilation of statistics; Economic forecasting; Provision of business information; Marketing research and marketing studies; Publication of publicity texts and publicity agents; Systemization of information into computer databases; Provision of commercial intelligence, namely, providing business and market intelligence services; business planning; All the aforesaid services relating to the energy, chemicals, metals, mining and commodities industries; Advisory and consulting services in the field of methodologies for cost accounting projects, business process improvement and business management relating to resource planning for the mining and resource industry in the nature of mine planning, equipment scheduling, maintenance scheduling, financial modelling, production scheduling, materials management, quality management, human resources management, project management relating to mine planning, equipment scheduling, maintenance scheduling, financial modelling, production scheduling, materials management, and quality management; Project management for business purposes in the field of mine planning, equipment scheduling, maintenance scheduling, financial modelling, production scheduling, materials management, and quality management; Providing commercial information in relation to resource planning for the mining and resource industries; Providing commercial information in the fields of energy, oil and gas, and coal and metals mining extraction; Computer services, namely, computerized database management relating to the handling, storage and regulation of hazardous waste materials; Business consulting and advisory services relating to product regulatory compliance, namely, services relating to compliance with customer, industry and/or regulatory obligations; Data management services relating to compliance with customer, industry and regulatory obligations for use in data collection, namely, systemization of data in computer databases and database management in the field of product regulatory compliance; Business risk management consultation services in the nature of assisting banks in quantifying the level of risk posed by merchants through analysis of merchant websites; Providing medical referrals and scheduling of medical appointments; Providing information and online databases in the fields of merchant business risk assessment; Providing data in the field of consumer behavior, namely, marketing information about consumer behavior; Maintaining a registry in the field of heavy machinery with information on ownership and theft of assets; Maintaining a database in the nature of a registry that provides data on the ownership of construction equipment for use by the insurance industry and law enforcement; Maintaining a registry of investigators of stolen equipment; Compiling and analyzing data, namely, business data for use in the insurance and financial industries; Compilation and analysis of information, namely, data compiling and analyzing in the field of insurance, relating to wildfires and analysis of risk associated with wildfires; Compilation and analysis of ratings information, namely, business risk assessment in the field of wildfires, used to evaluate risk; Providing risk analysis ratings information, namely, business risk assessment, to the insurance industry relating to wildfires used to evaluate risk; Business consulting in the fields of weather, climate and environmental risk; Consulting and advisory services in the field of business risk analysis associated with energy service interruption; providing information in the field of business risk analysis associated with energy services interruption via the internet; Compilation and analysis of data to assist in insurance claims management and analysis, and business risk management and analysis; Providing business information, namely business information on weather events, other catastrophes, and business information related to estimates of insured loss and actual insured loss resulting from catastrophic events, to assist in insurance claims management and analysis, risk management and analysis, business risk assessment, and financial and investment analysis; Providing on-line databases featuring business information, namely, business information related to weather-related events, other catastrophic events, and business information related to estimates of insured loss and actual insured loss resulting from catastrophic events; Providing online databases and information about energy and energy analytics, namely, in the field of business risk management and analysis, insurance risk analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing consulting and advisory services in the field of energy, namely, business risk management and analysis, insurance risk analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Insurance rating services and information relative thereto, namely, benchmarking expected loss for risk assessment purposes; Providing a database that contains investigation results, namely, insurance claims auditing data regarding the loss, damage or theft of insured property for use by insurance companies; Providing information in the field of insurance claims, namely, insurance claims auditing, and insurance risk assessment; Providing online databases and information in the field of insurance, insurance services, insurance analytics, insurance claims, insurance management and analysis, namely, insurance claims auditing, and insurance risk assessment; Insurance analysis services, namely, insurance claims auditing, and insurance risk assessment; Providing vehicle history reports, namely, providing reports about vehicle repairs, damage, accidents and ownership for insurance risk evaluation purposes; Providing insurance rating data via an online database available on the internet, namely, benchmarking expected loss for risk assessment purposes; Consulting and services related thereto in the nature of consultation in the fields of use of imagery ____ [specify reasonable clarification of use of imagery services in this class, e.g., brand imagery consulting] in the fields of energy, natural resources and geopoliticsin the nature of photographs, aerial, terrestrial, and satellite imagery, and imagery from other remote sensing technologies, energy in the nature of energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency, natural resources in the nature of investment opportunity evaluations in the field of natural resources, natural resources price comparisons, natural resource usage management and natural resources efficiency, and geopolitics; Providing online websites in the field of insurance claims auditing, business risk management and analysis, business risk analytics, business risk calculation, business risk mitigation, and business risk forecasting; Providing on-line information in the field of property and casualty insurance loss, namely, claims auditing; Providing on-line information for health care businesses, health care providers and others in the health care market, namely, health care cost management and fraud prevention for analyzing and creating reports on, health care costs and cost-control, for targeting specific business problems in the health care field; Providing on-line information in the field of insurance premium audits, for outsourcing insurance premium audits and for linking users of insurance premium audit services to high-quality vendors; Providing on-line information in the field of estimating contracting work and providing replacement cost valuation to receive, track, document and manage repair estimates and property replacement costs; Providing on-line information in the field of screening candidates for verification of education, credentials, and employment history for business purposes; Providing on-line information in the field of estimating contracting work and providing replacement cost valuation, for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; Providing on-line information in the field of business risk assessment, business management analysis and business management; Providing on-line information in the field of insurance claims auditing; Providing an interactive website featuring information, imagery, and analysis relating to natural resources, namely, natural resources business risk assessment, natural resources investment opportunities, and natural resources management; Providing information in the field of natural resources business risk assessment, natural resources investment opportunities, and natural resources management; Providing information about insurance and potential insured, namely, ___ [specify type of claim information service in this class, e.g.,  providing statistical evaluation of insurance claims performance measures] evaluation, benchmarking, and analysis of insurance claims for others

 

 

International Class 36:   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;  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 about insurance and potential insured, namely, assessment of insurance claims

 

International Class 37:  Providing information, online databases, and analysis in the field of energy extraction, namely, ___ [specify type, e.g., extraction of oil and gas]

 

International Class 40:  Providing information, imagery, and analysis, and online databases and information  in the field of energy, namely, in the field of energy generation and extraction

 

International Class 41:  Providing in-person educational 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 an interactive website featuring imagery, namely, ___ [specify type, e.g., non-downloadable videos and photographs] in the field of assessment of energy efficiency and business risk management and energy generation and extraction; All the aforesaid services relating to the energy, chemicals, metals, mining and commodities industries

 

International Class 42:   Providing an interactive website featuring information and analysis in the field of natural resources, namely, environmental risk assessments

 

International Class 45:  Providing information in the field of energy, namely, legal information about regulatory compliance issues

 

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.

 

Multiple Class Applications

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 seven classes; however, applicant submitted a fee(s) sufficient for only two class(es).  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 Information

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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 11/26/2018 FOR U.S. APPLICATION SERIAL NO. 87635242

 

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 11/26/2018 (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.