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: 11/9/2017

                       

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

 

A number of items in the identification require clarification.  For example, the wording “Providing on-line non-downloadable software programs and information for use in analyzing property and casualty insurance loss information” is too broad as it could include services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Provision of online, non-downloadable software other than for gaming purposes is in International Class 42 and must include a description of the purpose or function of the software, and the field, if field specific.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  The service of providing online information is classified based on the subject matter of the information provided.  TMEP §1402.11(b). 

 

Additional wording requiring clarification and examples of acceptable amendments are provided in the sample amended identification below.

 

Applicant may adopt the following amended identification, if accurate:

 

International Class 35:  Providing on-line information in the field of property and casualty insurance loss, namely,  ___ [specify subject in this class, e.g., claims auditing]; Providing on-line information for health care businesses, health care providers and others in the health care market, namely, ___ [specify subject of information, e.g., health care cost management] 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 ___ [specify subject, e.g., price comparisons] 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 ___ [specify subject, e.g., goods price quotations] for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; Providing on-line information in the field of ___ [specify subject, e.g., business] risk assessment, ___ [specify subject, e.g., business management] analysis and  ___ [specify subject, e.g., 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, ___ [specify type of service in this class, e.g., natural resources management];  Providing information in the field of  natural resources management; providing information about insurance and potential insured, namely, ___ [specify subject, e.g., statistical evaluation of insurance claims performance measures for others]

 

International Class 36:  Providing on-line information in the field of property and casualty insurance loss, namely, ___ [specify subject in this class, e.g., claims auditing]; Providing on-line information in the field of ___ [specify subject, e.g.,  real estate appraisal and valuation] for use as an automated valuation model for real estate property assessment and creation of real property valuation reports for others; Providing on-line information in the field of ___ [specify subject, e.g., financial valuation for insurance purposes] for health care businesses, health care providers and others in the health care market, for analyzing, creating financial models of, and creating reports on, the financing of health care costs, managed care provider groups, self-insured employers, third party administrators; Providing on-line information in the field of claims administration for managing workers compensation claims; Providing on-line information, namely, providing online financial calculators for use in executing residential insurance and valuation calculations; Providing on-line information  in the field of __ [specify subject, e.g., personal and real estate appraisals and repair cost evaluation] to receive, track, document and manage insurance claims, property valuations, repair estimates and property replacement costs; Providing on-line information in the field of ___ [specify insurance claims processing] used in insurance claims handling and that allows for collaboration among insurance underwriters, insurance claims personnel and insurance policyholders; Providing on-line information in the field of ___ [specify subject, e.g., repair cost evaluation] for cost estimating in the building, construction, repair, restoration, maintenance and remodeling industries; Providing on-line information in the field of ___ [specify subject, e.g., financial] risk assessment, ___ [specify subject, e.g., financial risk] analysis and  ___ [specify subject, e.g., financial risk] management; Providing on-line information in the field of insurance claims assessment; providing information about insurance and prospective insureds and reports relating to insurance, namely, ___ [specify type of information in this class, e.g., insurance premium rate quotes]

 

International Class 37:  Providing online information in the field of ___ [specify subject, e.g., building construction information], for detecting, identifying, measuring and analyzing roofs, building structures, property, terrain, and other objects and conditions; Providing online information in the field of ___ [specify subject, e.g., construction planning] for creating drawings, floorplans, and schematics of property; Providing on-line in the field of ___ [specify subject, e.g., building inspection in the course of construction] for use in inspection, evaluation and assessment of building;

 

International Class 38:  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

 

International Class 41:  providing computer representations of geographic locations namely, ___ [specify type of service in this class, e.g., digital imaging services] created from aerial, terrestrial, satellite and geospatial imagery; Providing online information in the field of ___ [specify subject, e.g., photography information] for use with aerial, terrestrial, satellite and geospatial imagery, and with photographic data; Providing on-line information in the field of ___ [specify subject, e.g., photography information] for use in providing information featuring aerial, terrestrial, satellite and geospatial imagery and photographic data; Providing on-line information in the field of ___ [specify subject, e.g., for capturing, storing, management, processing and transmitting photos, videos and other sensory and detection information; Providing on-line information in the field of ___ [specify subject, e.g., digital photography] for capturing images

 

International Class 42:  Providing on-line non-downloadable software programs [delete “and information”] for use in analyzing property and casualty insurance loss information; Providing on-line non-downloadable software programs [delete “and information”] for use as an automated valuation model for real estate property assessment and creation of real property valuation reports for others; Providing on-line non-downloadable software programs  [delete “and information”]  for health care businesses, health care providers and others in the health care market, for analyzing, creating financial models of, and creating reports on, health care costs and cost-control, the financing of health care costs, managed care provider groups, self-insured employers, third party administrators, and the delivery of health care services, for targeting specific business problems in the health care field, to perform information and research services regarding the Medicare market, and to validate claim submissions and detect, investigate, audit and manage fraudulent claims and over-payment of claims; Providing on-line non-downloadable software [delete “and information”] for accessing, storing, retrieving and updating driver and motor vehicle records; Providing on-line non-downloadable software [delete “and information”]  for managing workers compensation claims; Providing on-line non-downloadable software [delete “and information”]  for use by the insurance industry to electronically pre-fill insurance applications with applicant information from existing databases; Providing on-line non-downloadable software [delete “and information”]  for use in executing residential insurance and valuation calculations; Providing on-line non-downloadable software [delete “and information”] featuring  a spatial assessment tool that offers geographic maps displaying insurance risk assessment data and information, namely, risk addresses, risk assessment, exposure concentrations, and information regarding target areas for underwriting new business; Providing on-line non-downloadable software [delete “and information”] for conducting insurance premium audits, for outsourcing insurance premium audits and for linking users of insurance premium audit services to high-quality vendors; Providing on-line non-downloadable software [delete “and information”] for providing real-time claims management reports to insurance carriers and restoration contractors via a secure on-line website; Providing on-line non-downloadable software  [delete “and information”] to receive, track, document and manage insurance claims, property valuations, repair estimates and property replacement costs; Providing on-line non-downloadable software  [delete “and information”] used in insurance claims handling for collaboration among insurance underwriters, insurance claims personnel and insurance policyholders; Providing on-line non-downloadable software  [delete “and information”] for ___ [specify function, e.g., weather forecasting] to insurance companies and farmers concerning the risk of weather-related losses; Providing on-line non-downloadable software [delete “and information”] for screening candidates for employment for criminal records and verification of education, credentials, and employment history; Recovery of computer data generated during the operation of vehicles; Providing on-line databases featuring weather-related catastrophic events; Computer software maintenance, technical support, namely, troubleshooting of computer software problems; Providing data conversion of computer program data, other than physical conversion, data analysis, namely, ___ [specify type in this class, e.g., computer security threat analysis],  and development of data reporting software in the healthcare and health insurance industry; Consulting services related to data conversion, other than physical conversion, and ___ [clarify type of service provided, e.g., consulting in the development of] analysis and reporting software in the healthcare and health insurance industry; Application service provider featuring software for providing an online computer database that facilitates audits of insurance premiums; Providing climate forecast information; Electronic data storage services for others; Providing an interactive website featuring technology that allows users to view, annotate and manipulate geospatial data related to properties, structures and characteristics of the earth and objects upon the earth; Obtaining information and providing information and analysis, namely, ___ [specify type of service, e.g., tomographic imaging and topographic surveying] for providing images and measurements of building structures, roofs, other features of building structures, property, terrain, and [delete “other objects in the nature of” for clarity] structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using imagery and remote sensing technologies; Providing geographic information and measurement information through the collection, manipulation, processing, and/or formatting of images and geographic measurements of geographic locations, namely, ___ [specify types of services in this class, e.g., tomographic imaging and topographic surveying]; providing computer representations of geographic locations namely, ___ [specify type of service in this class, e.g., computer modeling services] created from aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies; Providing three dimensional imagery, namely, ___ [specify type of service, e.g., computer graphic design] and computer modeling with measurements and images of building structures, roofs, other features of building structures, property, terrain and [delete “other objects in the nature of”] structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; Remote measuring services for building structures, roofs, property, other features of building structures, terrain, and [delete “other objects in the nature of”] structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, using aerial, terrestrial, satellite and geospatial imagery and other imagery, other remote sensing technologies, and computer software; Obtaining information and imagery, and providing information, imagery, and analysis, namely, ___ [specify type of service/information in this class, e.g., computer electronic imaging] of building structures, roofs, other features of building structures, property, terrain, other objects and conditions, weather, natural hazards, climate, environment, and natural disasters, for use in building inspections, risk assessment, hazard assessment, reconstruction assessment, and to assist in insurance claims management and analysis;  Providing online non-downloadable software [delete “and information”] for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; Providing online non-downloadable software a[delete “and information”] for detecting, identifying, measuring and analyzing roofs, building structures, property, terrain, and other objects and conditions; Providing online non-downloadable software [delete “and information”] for use with aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies, and with photographic data, geospatial data, locational data, and other information and data from remote sensing technologies; Providing online non-downloadable software  [delete “and information”]  for creating drawings, floorplans, and schematics of building structures, roofs, other features of building structures, property, terrain and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; Providing online non-downloadable software [delete “and information”]  for integrating electronic data and other information with real world environments; Providing online non-downloadable software [delete “and information”] for integrating electronic data and other information with real world environments for the purpose of generating maps, representations of building structures, roofs, other features of building structures, property, terrain and other objects and conditions; Providing online non-downloadable software [delete “and information”] for use in providing information featuring aerial, terrestrial, satellite and geospatial imagery and other imagery and remote sensing technologies and photographic data, geospatial data, locational data, and other information and data generated from remote sensing technologies; Providing online non-downloadable software [delete “and information”] for photogrammetric analysis; Providing online non-downloadable software [delete “and information”] for use in detection, inspection, evaluation and assessment of buildings and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement; Providing online non-downloadable software [delete “and information”] for risk assessment, analysis and management and hazard assessment, analysis and management; Providing online non-downloadable software [delete “and information”] to assist in insurance claims assessment, analysis and management; Providing online non-downloadable software [delete “and information”] for capturing, storing, management, processing and transmitting photos, videos and other sensory and detection information; Providing online non-downloadable software [delete “and information”] used for capturing, storing and accessing images and geographic, locational and other data regarding the captured, stored and accessed images; Providing an interactive website featuring information, imagery, and analysis, namely, ___ [specify type of service in this class, e.g., engineering information] in the field of building structures, roofs, other features of building structures, property, terrain, other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, weather, environment, climate, and natural disasters; Providing an interactive website featuring information, imagery, and analysis, namely, ___ [specify type of service in this class, e.g., provision of information in the fields of weather, environmental protection, and climate change science]; providing an interactive website featuring information, imagery, and analysis, namely, ___ [specify type of service in this class, e.g., provision of information in the field of] forensic analysis; Providing information, imagery, and analysis in the fields of weather, environment ___ [specify topic, e.g., protection, climate ___ [specify topic, e.g., science] and forensic analysis; Obtaining information and providing information and analysis, namely, ___ [specify type of service in this class, e.g., measurement evaluations] featuring imagery and measurements in the field of building structures, roofs, other features of building structures, property, terrain, and other objects in the nature of structural material and contents of buildings and land and conditions in the nature of damage and need for repair or replacement, gathered by manned and unmanned aerial systems; Providing online non-downloadable software [delete “and information”] for use in analysis, predictive modeling, and creating reports, relating to property damages, loss information, climate, environment, weather events, catastrophes, and other events and conditions; Providing information and analysis, namely, ___ [specify subject in this class, e.g., scientific information] in the fields of landscape ___ [specify subject in this class, e.g., geology], climate  ___ [specify subject in this class, e.g., change science, and environmental  ___ [specify subject in this class, e.g., protection], and changes and risks associated therewith using aerial, terrestrial, satellite and other imagery and remote sensing technologies; Providing online non-downloadable software [delete “and information”]for controlling imaging and other sensory and detection apparatus and technologies; Providing an interactive website featuring technology that allows users to access, review, comment on, receive training on, and provide feedback on, software and services in the field of insurance and conduct interactive discussions in the field of insurance; Providing online non-downloadable software [delete “and information”] for use in valuations of real estate, buildings, fixtures, personal property and other objects; Providing online non-downloadable software  [delete “and information”] for documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; Providing online non-downloadable software  [delete “and information”] for communicating with insurance policyholders and insurance industry professionals, for providing and tracking customer surveys and for estimating the costs of insurance, construction, engineering, remodeling or replacement of residential, commercial, industrial and agricultural buildings and the fixtures and contents thereof; Providing online non-downloadable software [delete “and information”], namely, graphic based construction estimation software [delete “and information”] to estimate the cost of building or repairing structures and other objects in the nature of structural material and contents of buildings and land; Providing online non-downloadable software  [delete “and information”], namely, non-downloadable cost estimation, project management and analytic reporting software [delete “and information”]; Providing online non-downloadable software [delete “and information”] for identifying, estimating and valuing insuring, remodeling, replacement and construction costs; Providing online non-downloadable software  [delete “and information”] for analytics regarding weather, hazards and other events and conditions in the nature of climates, environment, and catastrophes; Providing a database featuring information and analysis about weather, environment ___ [specify subject, e.g., science and protection], climate  ___ [specify subject, e.g., science] and natural hazards in the nature of ___ [specify subject, e.g., weather and geological event forecasts]; Providing online non-downloadable software [delete “and information”]for creating reports about weather, environment, climate, and natural hazards; Electronic storage services, namely, storing data for others relating to insurance claims, home warranties, valuations of real estate, buildings, fixtures, and personal property, residential insurance valuation calculations, and construction, replacement and remodeling costs estimates, and insurance policies covering real estate; Electronic storage services, namely, storing data for others in the fields of residential, commercial, industrial and agricultural real estate valuations, construction, replacement and remodeling costs estimates; Electronic storage services, namely, storing data from aerial, terrestrial, satellite and other imagery and remote sensing technologies, photographic data and geospatial data; Providing online non-downloadable software  [delete “and information”] for education and training in the fields of insurance cost valuation and residential construction and remodeling; Providing online non-downloadable software [delete “and information”] for identifying documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; Providing online non-downloadable software  [delete “and information”] for calculating the costs of repairs and for monitoring of claims under home warranties and building insurance policies; Providing online non-downloadable software [delete “and information”] for calculating the costs of, tracking the progress and payments of, and reporting personal property claims;Development of industry standards and practices, namely, ___ [specify type of service, e.g., developing voluntary standards] in the field of imagery and geospatial intelligence and analysis, and use of manned and unmanned aerial vehicles and related technology; Providing technology information namely, information about __ [specify type of technology, e.g., sensing and measuring technology] in the field of geospatial intelligence and analysis; Providing on-line databases and preparation of customized reports and analytical documents delivered electronically featuring ___ [specify type of information in this class, e.g., scientific research and analysis] on weather, environment, climate and natural hazards; Providing on-line, non-downloadable software  [delete “and information”] for creating and viewing reports and maps about weather, environment, climate and natural hazards; Providing a website featuring temporary use of non-downloadable software for creating and viewing reports and maps; Providing online non-downloadable software  [delete “and information”] for the operation of unmanned aerial systems; Providing online non-downloadable software  [delete “and information”] for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, and geospatial imagery and other imagery and outputs from sensory and detection technologies; Providing online non-downloadable software  [delete “and information”] for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, and aerial, terrestrial, satellite, geospatial and other imagery and outputs from sensory and detection technologies in the fields of in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, environment, weather and climate, surveillance, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, and geopolitics; Providing online non-downloadable software  [delete “and information”] for capturing, generating, taking, viewing, storing, editing, arranging, converting, combining, sharing, downloading, enhancing, providing, accessing, annotating, transmitting, manipulating, processing, analyzing, maintaining, searching, managing, displaying, detecting, reproducing, modifying and otherwise interacting with or utilizing information, data, aerial, terrestrial, satellite, and geospatial imagery and other imagery and outputs from sensory and detection technologies for fraud detection, assessment of energy efficiency, analysis of infrastructure, analysis of electrical utilities infrastructure, forensic analysis, geographical information systems and risk assessment, risk detection, risk analysis, and risk management; obtaining and providing information and imagery, namely, ___ [specify type of service, e.g., scientific research information] on weather events, catastrophes, environment, and climate to assist in insurance claims management and analysis, risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis; Providing online non-downloadable software [delete “and information”] for risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, and financial and investment analysis; Providing online non-downloadable software  [delete “and information”] for accessing information on risk in specific geographic regions, catastrophic events, weather events, world events, and other potential loss events; Providing online non-downloadable software [delete “and information”] for accessing information on risk relating to human rights, political stability, security, corruption, safety, conflicts, terrorism, food security, water security, energy security, climate change and poverty; Providing online non-downloadable risk modeling software [delete “and information”] for analyzing business and financial risk, and software for climate, environment and disaster risk management; Providing online non-downloadable software  [delete “and information”] for use in analysis, predictive modeling, and creating reports, relating to catastrophic loss information, weather events, other catastrophes, and world events; Hosting online databases featuring information and analytics on risk in particular geographic regions, weather and natural hazards, weather-related events, other catastrophic events, world events, other loss events; Hosting online databases featuring information and analytics on risk relating to human rights, political stability, security, corruption, safety, conflicts, terrorism, food security, water security, energy security, climate change and poverty; Hosting of a website featuring information and analytics 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 non-downloadable software  [delete “and information”] for use in financial analysis, financial risk management, marketing in the financial field, and warehousing of financial data; data warehousing for financial services institutions; Consultancy services in the field of simulation software for the modeling of natural and man-made events, catastrophe modeling software, weather modeling software, environment modeling software, climate modeling software, consultancy services in the field of risk management software, loss modeling software, software to model rebuild and replacement costs for damaged structures; Scientific and technological services and research and design relating thereto, namely, computer programming and computer software consultation in the fields of methodologies for costing projects, financial planning, business process improvement, business management, mine planning, equipment scheduling, maintenance scheduling, financial modelling, production scheduling, materials management, quality management, human resources management, project management in the field of the chemical, energy, oil and gas, and coal and metals mining; Scientific and industrial research in the field of chemical, energy, oil and gas, and coal and metals mining industries; Professional technological consultancy services and preparation of technology research reports relating to energy, oil and gas, and coal and metals mining industries; Providing technological information, advisory and consultancy services in relation to the energy, oil and gas, and coal and metals mining industries; providing technological information, advisory and consultancy services to companies in the energy, oil and gas, and coal and metals mining industries in the field of chemical, energy, oil and gas, and coal and metals mining industries; Scientific and technological services and research, namely, technical data analysis and modelling in the fields of energy, chemicals, metals and mining; Industrial analysis and research services in the fields of energy, chemicals, metals and mining; Analysis services for oil field exploration; Analysis services for mining exploration; Scientific research consultancy in the fields of energy, chemicals, metals and mining; Oil prospecting; Oil well testing; Research in the field of environmental protection; Providing online databases of environmental information enabling customers to analyze and determine the environmental impact of industrial sites, operations, and chemicals used therein; and providing online databases of scientific information enabling customers to analyze and determine the environmental impact of industrial sites, operations, and chemicals used therein; Providing online, non-downloadable software  [delete “and information”] for retail businesses for identifying employee and customer theft and fraud; Providing online, non-downloadable software  [delete “and information”] for retail businesses for managing transaction data; Providing online, non-downloadable software  [delete “and information”] for loss prevention in retail businesses; Providing online, non-downloadable software  [delete “and information”] for creating reports in the field of loss prevention in retail businesses; Providing on-line databases featuring weather information and weather reporting; Providing on-line non-downloadable software  [delete “and information”] for use in analysis, predictive modeling, and creating reports, relating to catastrophic loss information, weather events and other catastrophes; Reporting services, namely, weather reporting; Providing on-line non-downloadable software  [delete “and information”] for analyzing risk relating to weather and other perils; Software as a service (SAAS) services featuring software for risk management associated with energy service interruption; Weather forecasting information services; Research in the field of weather, climate and the environment; Consulting and advisory services in the field of weather, climate, and environmental risk; Scientific research; Research in the field of space exploration; [delete “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” and reclassify in Class 38]; [delete “electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude” and reclassify in Class 38]; Providing on-line non-downloadable searchable computer databases featuring geographic information derived from scientific research on wildfires, and featuring information associated with wildfires in the nature of ___ [specify type of information in this class, e.g., environmental impacts of wildfires] for risk analysis purposes; providing a website featuring information in the nature of ___ [specify type of information in this class or delete], technology that enables users to analyze the risk associated with wildfires for insurance purposes; providing online non-downloadable software  [delete “and information”] for analyzing risk analysis information relating to residential and commercial property; Providing an interactive website featuring technology that allows users to access and download information, analysis and reports on fire protection efforts to assist communities with evaluating fire risk; Providing online non-downloadable software  [delete “and information”] for ___ [specify function, e.g., electronic messaging] in the fields of career counseling and training, communication of corporate directives, compliance requirements and procedure and best practices to a distributed workforce; Data validation services provided to insurance companies, law enforcement agencies and equipment owners, namely, ___ [specify type of service in this class, e.g., providing customized computer search and retrieval based on specific customer requests] in the field of data to verify the accuracy and status of the Product Identification Number for equipment electronically or via the telephone; Developing databases and investigative resources in the nature of___ [specify type of resources in this class, e.g., development of voluntary standards for theft investigation] for use by law enforcement agencies to deter theft; Providing on-line, non-downloadable software  [delete “and information”] for use in insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention; providing on-line, non-downloadable software  [delete “and information”] for insurance claims management and case management and reviewing, analyzing, and tracking of insurance claims data; providing on-line, non-downloadable software  [delete “and information”] for incident investigating and reporting; providing on-line, non-downloadable software  [delete “and information”] for identifying and investigating theft and fraud; providing on-line, non-downloadable software [delete “and information”] for insurance investigations; providing on-line, non-downloadable software [delete “and information”] for providing estimates of loss to assist in settlement of insurance claims; providing on-line, non-downloadable software  [delete “and information”] for data collection, analytics, and providing alerts, on crimes, accidents, other safety events in the workplace and brand protection issues; providing on-line, non-downloadable software  [delete “and information”] to assist property owners and law enforcement to investigate and recover stolen or damaged property, to share and analyze information regarding crimes, and for reporting of criminal activity; providing on-line, non-downloadable software [delete “and information”] for monitoring employee compliance; providing on-line, non-downloadable software  [delete “and information”] for screening employees and candidates for employment for criminal records and verification of education, credentials, and employment history; providing on-line, non-downloadable software  [delete “and information”] for use in risk mitigation arising from weather events and for using weather forecasting information to make decisions regarding merchandising; providing on-line, non-downloadable software  [delete “and information”] for analyzing data and creating reports relating to risk and loss prevention; Electronic storage services, namely, storing data for use in insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention; Providing online non-downloadable software to access information about insurance and prospective insureds and to order reports relating to insurance;[delete “providing information about insurance and prospective insureds and reports relating to insurance” as not in this class, reclassify in Classes 35/36/45]; Providing online non-downloadable computer software  [delete “and information”] for screening employees and candidates for employment concerning criminal records, driving records, for verification of social security numbers, education and employment history, and for managing, monitoring and analyzing information about drivers; Providing online, non-downloadable software  [delete “and information”] for identifying damage to vehicles.

 

International Class 45:  Providing on-line information  in the field of ___ [specify subject, e.g., fraud investigations] for managing workers compensation claims; Providing on-line information in the field of screening candidates for employment for criminal records; Providing on-line information in the field of ___ [specify subject, e.g., personal security threat] risk assessment, ___ [specify subject, e.g., personal security threat] analysis and hazard assessment in the nature of ___ [specify subject, e.g., safety information about hazard abatement]; providing information about insurance and prospective insureds and reports relating to insurance, namely, ___ [specify type of information in this class, e.g., insurance claims investigation information]

 

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 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

 

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.  

 

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 11/9/2017 FOR U.S. APPLICATION SERIAL NO. 87635367

 

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 11/9/2017 (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.