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: 11/8/2017

                       

The application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Clarification of Identification and Classification of Services Required

 

The wording “Providing on-line forums in the nature of webinars and on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research 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, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing on-line forums in the nature of webinars and on-line discussions, for on-line collaboration 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 other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture” is too broad as it could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass provision of online forums in International Class 38, provision of online, non-downloadable webinars in International Class 41, and provision of a website featuring technology that enables users to engage in discussions in International Class 42.

 

The wording “Providing electronic notifications with information on bankruptcy matters” is too broad as it could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass provision of financial information via email notification alerts in International Class 36, and telecommunications transmission in International Class 38.

 

Applicant may adopt the following amended identification, if accurate:

 

International Class 36:  Providing electronic notifications with information on bankruptcy matters, namely, ___ [specify type of service in this class, e.g., provision of financial notifications in the field of bankruptcy via email alerts]

 

International Class 38:  Automatic electronic transmission of notifications of changes in automobile liability insurance policies to state motor vehicle departments; Electronic transmission for others of information on data from aerial, terrestrial, and satellite imagery and other remote sensing technologies, photographic data, geospatial data, locational data, insurance claims, valuations of real estate, buildings, fixtures, and personal property, and building construction cost estimating and valuation via the Internet; Providing on-line forums for transmission of messages among computer users concerning 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, and consulting and services related thereto in the nature of consulting services in the field of communications and consulting services to facilitate on-line forums; Providing online forums for users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research 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, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing on-line forums for on-line collaboration 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 other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing multi-user access to a global computer information network for the transfer and dissemination of information relating to the energy, oil and gas, and coal and metals mining industries; Information, advisory and consultancy services in relation to all the aforesaid services; Providing access to databases of information in the field of product regulatory compliance via a global computer network;  Providing telecommunications transmission of electronic notifications with information on bankruptcy matters; Providing access over a global computer network to databases and information for use in insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention.

 

International Class 41:  Providing on-line webinars 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, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture

 

International Class 42:  Providing a website featuring technology that enables users to engage in  on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research 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, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing a website featuring technology that enables users to engage in on-line discussions, for on-line collaboration 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 other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture

 

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 four classes; however, applicant submitted a fee(s) sufficient for only one 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).

 

Response Guidelines

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/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 11/8/2017 FOR U.S. APPLICATION SERIAL NO. 87635300

 

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 11/8/2017 (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.