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 Goods and Services Required

 

The wording “Software for use with aerial, terrestrial, satellite and other imagery and remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and with photographic data, geospatial data, locational data and other information and data generated using remote sensing technologies” and “Downloadable reports, data files and software featuring information and analytics regarding weather, climate, environment, hazards and other events and conditions” in the identification for software in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  As currently wording the identification specifies only the field of use.  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The wording “Computer software for with product regulatory compliance, namely, for use in data collection, database management, analytics, regulatory reporting, and providing information to customers on compliance with customer, industry and/or regulatory obligations” in the identification of goods appears to have a typographic error or word missing between “for with”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). 

 

Applicant has classified “providing information regarding theft of assets distributed electronically through downloadable mobile applications” in International Class 9; however, the proper classification is International Class 45.  Therefore, applicant may respond by (1) adding International Class 45 to the application and reclassifying these services in the proper international class, (2) deleting this item from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may adopt the following amended identification, if accurate:

 

International Class 9:  Downloadable reports about property damage, loss, climate, environment, weather events, and catastrophes; Downloadable images in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather, environment and climate, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government and geopolitics; Software for cost estimating and other assessments in the building, construction, repair, restoration, maintenance and remodeling industries; Software for detecting, identifying, measuring and analyzing roofs, 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; Software for ___ [specify function, e.g., image capture and analysis] for use with aerial, terrestrial, satellite and other imagery and remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and with photographic data, geospatial data, locational data and other information and data generated using remote sensing technologies; Downloadable reports about property damage, loss, climate, environment, weather events, and catastrophes, and surveillance, with aerial, terrestrial, satellite and other imagery and remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and with photographic data, geospatial data, locational data and other information and data generated using remote sensing technologies; Software 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; Software 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 in the fields of energy and natural resources, agriculture, mining, transportation, supply chain logistics, engineering, weather, environment and climate, surveillance, cartography, insurance, banking, construction, real estate, law enforcement, emergency services, government, real estate, and geopolitics; Software 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, surveillance, geographical information systems and risk assessment, risk detection, risk analysis, and risk management; Software for creating drawings, floorplans, and schematics of building structures, roofs, other features of Building structures, property, terrain and other objects and conditions; Software for integrating electronic data and other information with real world environments; Software 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, and terrain and other objects and conditions; software for use in providing information featuring aerial, terrestrial, satellite and geospatial imagery, and other imagery and other remote sensing technologies in the nature of unmanned aerial vehicles, computer vision technology, and mobile remote sensing technologies, and photographic data, geospatial data, locational data and other information and data generated from remote sensing technologies; Software for photogrammetric analysis; Software 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; Software for risk assessment, analysis and management and hazard assessment, analysis and management; Software to assist in insurance claims assessment, analysis and management; Software for capturing, storing, managing, processing and transmitting photos, videos and other sensory and detection information; Software used for capturing, storing and accessing images and geographic, locational and other data regarding the captured, stored and accessed images; Software for use in analysis, predictive modeling, and creating reports, relating to property damages, loss information, climate, environment, weather events, and catastrophes; Software for controlling imaging apparatus and technologies and other sensory and detection apparatus and technologies; Software for use in valuations of real estate, buildings, fixtures, personal property and other objects; Software for identifying, documenting, inventorying, and monitoring personal, commercial, and industrial property and any damage thereto and status, condition, value and location thereof; Software, namely, graphic based construction estimation software, which estimates the cost of building or repairing structures and other objects; Software, namely, cost estimation, project management and analytic reporting software; Software for identifying, estimating and valuing insuring, remodeling, replacement and construction costs; Downloadable reports, data files and software for ____ [specify function, e.g., recording and analysis of data], all in the field of information and analytics regarding weather, climate, environment, hazards and other events and conditions; Downloadable electronic maps featuring information and analytics regarding weather, climate, environment, hazards and other conditions; Downloadable software for creating and viewing reports and maps; Downloadable white papers, research papers, instruction books, and tutorials, all in the field of photography, videography, 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; Software for the operation of unmanned aerial systems; Downloadable reports with information from computers or sensors relating to the status and conditions in residential and commercial buildings and in vehicles; Software for risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, and financial and investment analysis; Software for accessing information on risk for specific geographic regions, catastrophic events, weather, climate, and environmental events, world events, and other potential loss events; Software 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; Software for providing insurance data; Software for use in insurance, insurance services, insurance underwriting, and insurance rating information, and for computing, estimating, and analyzing insurance risk information; Risk modeling software for analyzing business and financial risk; Software for climate, environment and disaster risk management; Downloadable electronic publications in the nature of reports, briefs and data files featuring information regarding risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment, financial and investment analysis, and insurance hazard assessment; Downloadable electronic publications in the nature of reports, briefs and data files for use by insurance companies in the fields of corporate social responsibility, compliance, risk management and strategy, and audits; Downloadable electronic publications in the nature of reports, briefs and data files featuring information regarding risk for specific geographic regions, catastrophic events, weather, climate, and environmental events, world events, and other potential loss events; Downloadable electronic publications in the nature of reports, briefs and data files featuring information on risk relating to human rights, political stability, security, corruption, safety, conflicts, terrorism, food security, water security, energy security, climate change and poverty; Downloadable electronic publications in the nature of reports, briefs and data files featuring insurance data, insurance risk information, information about insurance services, insurance underwriting, insurance rating, and insurance risk, business risk and financial risk; Downloadable electronic publications in the nature of reports, briefs and data files featuring information on climate, environment and disaster risk management; Computer software for use in analysis, risk management, and marketing in the financial services field and warehousing of financial services data; Simulation software for the modeling of natural and man-made events, catastrophe modeling software, weather modeling software, climate and environment modeling software, risk management software, loss modeling software, software to model rebuild and replacement costs for damaged structures; Computer software and computer programs for data analysis and modelling relating to strategic business planning, financial planning, business process planning and improvement, business management, and commercial intelligence in the energy, chemicals, metals, mining and commodities industries; Downloadable electronic publications and electronic publications recorded on computer media in the nature of articles, reports, presentations, brochures and newsletters in the field of strategic business planning, financial planning, business process planning and improvement, business management, and commercial intelligence in the energy, chemicals, metals, mining and commodities industries; Computer software for use with product regulatory compliance, namely, for use in data collection, database management, analytics, regulatory reporting, and providing information to customers on compliance with customer, industry and/or regulatory obligations; Downloadable electronic reports with information on and analysis of wildfires and risk associated with wildfires, and ratings information relating to wildfires used to evaluate risk; downloadable electronic data files and databases with information on and analysis of wildfires and risk associated with wildfires, and ratings information relating to wildfires used to evaluate risk; downloadable electronic maps featuring information and analytics relating to wildfires and risk associated with wildfires; Downloadable electronic reports with information on and analysis of fire protection efforts; downloadable electronic reports with ratings information relating to fire protection efforts used to evaluate risk; Downloadable data files in the fields of merchant risk assessment and merchant compliance with customer, industry and/or regulatory obligations; Software for detection of fraudulent activity; software for detection of fraudulent activity in the field of insurance; software for identifying damage to vehicles; Downloadable electronic reports with bankruptcy information; Downloadable electronic reports regarding theft of assets; [reclassify “providing information regarding theft of assets distributed electronically through downloadable mobile applications” in International Class 45 and delete from International Class 9]; Software for use in retail, insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention, metrics tracking, retail transaction analytics and profit enhancement; software for insurance claims management, retail incident and case management and reviewing, analyzing, and tracking of insurance claims and retail data; software for incident reporting; software for identifying theft and fraud; software for insurance and retail fraud investigations; software for providing estimates of loss to assist in settlement of retail fraud incidents, and insurance claims; software for data collection, analytics, and providing alerts pertaining to retailer transaction and other retailer data, crimes, accidents, other safety events in the workplace and brand protection issues; software to assist retailers, 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; software for monitoring employee compliance; software for screening employees and candidates for employment for criminal records and verification of education, credentials, and employment history; software for use in risk mitigation arising from weather, climate and environmental events and for using forecasting information to make decisions regarding merchandising; software for analyzing data and creating reports relating to risk, metrics tracking, retail transaction analytics, profit enhancement and loss prevention; GPS tracking devices; Software for providing information and analytics about insurance, reinsurance, and insurance claims; software used to analyze and manage risk, to compile insurance claim information, to analyze and manage insurance information and insurance claim information, to track and manage financial information relating to insurance, to identify and detect fraud and abuse and to provide downloadable reports related thereto; software for insurance claims management; software for insurance underwriting downloadable electronic reports and downloadable electronic data files with information and analytics relating to insurance data, insurance claims, and insurance fraud and abuse; Downloadable reports and data files featuring information and analytics regarding weather and natural hazards; Downloadable electronic maps featuring information and analytics regarding weather and natural hazards; Downloadable software for creating and viewing reports and maps about weather and natural hazards that have occurred at geographic locations; Computer software for accessing downloadable databases for analyzing risk relating to weather and other perils; Software for accessing information on estimates of insured loss and actual insured loss resulting from catastrophic events, for accessing information on weather events and other catastrophic events, for insurance claims management, for risk management and analysis, for financial risk assessment, for financial and investment analysis, for providing insurance claims data, for facilitating interaction and engagement between insurers and claims adjusters, and for providing feedback about insurance claims; downloadable databases and electronic publications in the nature of articles and reports with information on estimates of insured loss and actual insured loss resulting from catastrophic events; downloadable databases and electronic publications in the nature of articles and reports with information about weather events and other catastrophes; downloadable databases and electronic publications in the nature of articles and reports with information in the insurance industry; electronic publications recorded on computer media, namely, newsletters providing information regarding estimates of insured loss and actual insured loss resulting from catastrophic events, newsletters that provide information about weather events and other catastrophes, and newsletters with information in the insurance industry; Software for retail businesses for identifying employee and customer theft and fraud; software for retail businesses for managing transaction data; software for loss prevention in retail businesses; software for creating reports in the field of loss prevention in retail businesses; Downloadable electronic reports with research and analytics in the field of energy

 

International Class 45:  providing information regarding theft of assets distributed electronically through downloadable mobile applications;

 

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 two 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. 87635443

 

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.