Response to Office Action

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

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

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

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87635300 V VERISK (Stylized and/or with Design, see http://uspto.report/TM/87635300/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

On November 9, 2017, the Examining Attorney issued an Office Action objecting to Applicant, Insurance Services Office, Inc.’s description of services in Class 38 for the mark VERISK & Design (“the Mark”).  Applicant also has co-pending applications for the Mark that were filed on the same day as the instant application covering goods and services in Classes 9, 16, 35, 36, 37, 39, 41, 42, 44 and 45. 

 

The Applicant is modifying its description of services in this application to be as follows:

 

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 online 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 online 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; Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis; Providing access to a database with information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.

The Applicant is transferring certain services into its co-pending applications Serial No. 87/635,269 in Class 36 and Serial No. 87/635,367 in Class 42.

 

The Applicant is also adding certain services into the instant application from Serial No. 87/635,326 in Class 41, Serial No. 87/635,367 in Class 42, and Serial No. 87/635,411 in Class 45.

 

We trust that this adequately addresses the Examining Attorney’s concerns and that this application may now proceed to publication.  

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for 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 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; 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 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: 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 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 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 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 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; Providing online 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 electronic notifications with information on bankruptcy matters; 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; Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis; Providing access to a database with information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.Class 038 for 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 online 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 online 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; Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis; Providing access to a database with information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 05/08/2018
Signatory's Name: Michael R. Friscia
Signatory's Position: Attorney of record, NJ bar member

Signatory's Phone Number: 973-622-4444

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

        
Serial Number: 87635300
Internet Transmission Date: Tue May 08 22:21:22 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201805082221224485
92-87635300-61035d12fddc7ff8b848e47b273a
79830cb225c23c165a5c1b8774ccfc9d722da2-N
/A-N/A-20180508215245440925