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: 5/30/2019

 

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on May 28, 2019.

 

The requirement for clarification of the identification of services is now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b).

 

Clarification of Identification and Classification of Services Required

 

The proposed amended wording “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” in International Class 35 is indefinite and must be amended to specify where the specific services begin and end.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The proposed amended wording “Providing online databases and information about energy and energy analytics, namely, in the field of business risk management and analysis energy price comparisons, energy usage management and energy efficiency” and “Providing consulting and advisory services in the field of energy, namely, business risk management and analysis energy price comparisons, energy usage management and energy efficiency” in International Class 35 is indefinite and must be clarified because “analysis energy price comparisons” does not clearly identify services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The proposed amended wording “Providing a database that contains investigation results, namely, insurance claims investigation data about the validity of claims regarding the loss, damage or theft of insured property for use by insurance companies” in International Class 35 is too broad because it could include insurance claims investigations data is in International Class 45, not International Class 35.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must either add International Class 45 to the application and reclassify the services therein, or delete this wording from International Class 36.

 

The proposed amended wording “Providing databases and information in the field of insurance claims processing, history, and auditing” in International Class 35 is too broad because it could include services in other classes.  Information about insurance claims auditing records is in International Class 35, information about insurance claims administration and processing history is in International Class 36, and investigation history is in International Class 45.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The proposed amended wording “Consulting and services related thereto in the nature of consultation in the fields of energy, natural resources and geopolitics” in International Class 35 is too broad because it could include energy efficiency consulting in International Class 35, financing of energy projects in International Class 36, energy distribution in International Class 39, energy generation in International Class 40, energy auditing in International Class 42.  Applicant must also specify the natural resources subject.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The proposed amended wording “Providing information in the field of energy, namely about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, energy distribution and energy disruption” in International Class 40 is not acceptable because it does not identify services in International Class 40.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The proposed amended wording  Obtaining and providing business and commercial information from computers or sensors relating to the status and conditions in in vehicles, namely, information about vehicle driving history and performance” in International Class 40 is not acceptable because these services are not in Serial No. 87635114.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

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; 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 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, consulting about business risk management and analysis, 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 and analysis relating to assessment of energy efficiency and business risk management; Providing information and analysis in the fields of energy, namely, about business risk management and analysis, energy price comparisons, energy usage management and energy efficiency, supply chain logistics management services for purposes of reduction of theft and risk of theft; Providing information 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 and 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 energy price comparison analysis, energy usage management and energy efficiency; Providing consulting and advisory services in the field of energy, namely, business risk management and analysis energy price comparison analysis, energy usage management and energy efficiency; Providing a database that contains investigation results, namely, insurance claims investigation data about the validity of claims 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; Providing databases and information in the field of insurance claims processing, history, and auditing; Compilation and analysis of insurance 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 insurance analysis; Compiling and analyzing data for insurance analysis purposes; Providing online databases and information and consulting and advisory services about energy, namely, energy price comparisons, energy usage management and energy efficiency; Providing online databases and information in the field of insurance, namely, insurance claims auditing; Insurance analysis services, namely, insurance claims auditing; Consulting and services related thereto in the nature of consultation in the fields of energy efficiency, natural resources management 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 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 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, and analysis relating to natural resources, namely, natural resources business risk assessment and natural resources management; Providing information in the field of natural resources business risk assessment and natural resources management; Providing information about insurance and potential insured, namely, providing statistical evaluation of insurance claims performance measures for others; Consulting in the field of energy, namely, business risk management consulting, energy price comparison consulting, and energy usage management and efficiency consulting; Providing information in the field of energy and supply chain logistics, namely, information about supply chain management for energy products; Consulting about managing business risk relating to catastrophes; Providing in person 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

 

International Class 36:  Providing databases and information in the field of insurance claims processing; Consulting and services related thereto in the nature of consultation in the fields of energy, namely, financing of energy projects

 

International Class 39:  Consulting and services related thereto in the nature of consultation in the fields of energy distribution

 

International Class 40:  Providing information and analysis, and online databases and information in the field of energy generation;  Providing information in the field of energy, namely about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, disruption of energy distribution and energy disruption; Consulting in the field of energy in the field of technology for generation of solar energy; Providing online databases, information and consulting in the field of production of wind and solar energy; Obtaining and providing business and commercial information from computers or sensors relating to the status and conditions in in vehicles, namely, information about vehicle driving history and performance; Providing information and analysis relating to emergency services, namely, information about hazardous waste treatment services used to analyze risk; consulting and services related thereto in the nature of consultation in the fields of energy generation

 

International Class 45:  Providing a database that contains investigation results, namely, insurance claims investigation data about the validity of claims regarding the loss, damage or theft of insured property for use by insurance companies

 

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).

 

Applicant should consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual for assistance with identifying and classifying goods and services in trademark applications.  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 Sections 1(b) and/or 44:

 

(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 five 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 Sections 1(b) and/or 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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.  

 

Applicant may 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 5/30/2019 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 5/30/2019 (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.