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

 

A number of items in the identification require clarification.  For example, the wording “Providing an interactive website featuring information, imagery, and analysis relating to electrical utilities infrastructure, insurance, banking, and real estate; Providing an interactive website featuring information, imagery, and analysis relating to analysis of infrastructure, insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; Providing information, imagery, and analysis relating to electrical utilities infrastructure, insurance, banking, real estate, property evaluation, terrain evaluation in the nature of land evaluation” 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.  Classification of information services is 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 9:  Database recorded on computer media that contains investigation results regarding the loss, damage or theft of insured property for use by insurance companies; Databases recorded on computer media for using predictive modeling to allow insurance carriers and insurance underwriters to rate and underwrite insurance policies;

 

International Class 35:  Insurance rating services and information relative thereto, namely, ___ [specify topic in this class, e.g., providing insurance premium rate comparisons for commercial purposes]; Providing a database that contains investigation results, namely, ____ [specify topic in this class, e.g., insurance claims auditing data] regarding the loss, damage or theft of insured property for use by insurance companies; Providing information in the field of insurance claims, namely, ___ [specify topic in this class, e.g., insurance claims auditing]; Providing databases and information in the field of insurance, insurance services, insurance analytics, insurance claims, insurance management and analysis, namely, ___ [specify insurance topics in this class, e.g., insurance claims auditing]; Insurance analysis services, namely, ___ [specify type of service in this class, e.g., insurance claims auditing]; Providing vehicle history reports, namely, ___ [specify type of services and contents of reports, e.g., providing reports about vehicle repairs, damage, accidents and ownership for consumer purchasing decision-making]; Providing insurance rating data via an online database available on the internet, namely, ___ [specify type of rating in this class, e.g., commercial evaluation and rating of the insurance services of others]

 

International Class 36:  Providing information about property and casualty insurance and underwriting risks, risk assessment and evaluation, and risk management, for use by insurance companies in handling insurance claims and insurance investigations, about pending and historical insurance claims, and the adequacy of insurance coverage; Providing insurance information relating to changes in automobile insurance policies; Insurance rating services and information relative thereto, namely, ___ [specify topic in this class, e.g., computing and providing information about computation of insurance premium rates]; Providing insurance appraisals and evaluations, namely, ___ [specify field or subject of appraisals, e.g., appraisals of personal and real property insurance claims, repair cost appraisal];Providing a database that contains investigation results, namely, ____ [specify topic in this class, e.g., financial investigations] regarding the loss, damage or theft of insured property for use by insurance companies; Providing real-time insurance claims processing reports to insurance carriers and restoration contractors via a secure online website; Providing ___ [specify type of service in this class, e.g., insurance claims processing] featuring automated claims administration management, tracking, and monitoring of all stages of insurance claims handling; Insurance consulting in the nature of evaluating issued insurance policy information in conjunction with third party data libraries and proprietary databases and assessing rating factor errors in premium auditing to enhance actuarial analysis, and determining for others the accuracy and validity of insurance policyholders data used for the calculation of insurance policy premiums; Performing insurance premium underwriting services for others for all types of insurance; Providing reports for mortgage originators and lenders containing information in making decisions about loans; Providing insurance information regarding the data of insurance policy transactions to comply with requirements to notify lien holders, secured parties, or mortgagees of changes in insurance coverage or policies; Providing information in the field of insurance claims, namely, ___ [specify topic in this class, e.g., insurance claims processing]; Providing information and imagery on property damage and terrain, namely, ___ [specify type of service and topic of information in this class, e.g., providing an online database for the purpose of appraisal], to assist in insurance claims administration and analysis, insurance and financial risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis; Providing an interactive website featuring information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the field of] [delete “electrical utilities infrastructure” as not in this class, reclassify in Class 37], insurance, banking, and real estate; Providing an interactive website featuring information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the field of] [delete “relating to analysis of infrastructure” as not in this class, reclassify in Class 37] insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; Providing information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the field of] [delete “relating to electrical utilities infrastructure” as not in this class, reclassify in Class 37] insurance, banking, real estate, and property evaluation in the field of ___ [specify type, e.g., real property][delete “terrain evaluation in the nature of land evaluation” as not in this class, reclassify in Class 42]; Providing information, imagery and analysis, namely, providing information in the fields of [delete “relating to analysis of infrastructure” as not in this class and reclassify in Class 37] insurance and financial risk assessment, insurance and financial risk detection, insurance and financial risk analysis, and financial risk management; Obtaining and providing information and imagery on facilities and structures in the field of energy, namely, ___ [specify topic in this class, e.g., real property appraisal reports] to assist in investment analysis, real estate valuation, and real estate investment and analysis; Providing databases and information in the field of insurance, insurance services, insurance analytics, insurance claims, insurance management and analysis, namely, ___ [specify insurance topics in this class, e.g., claims assessment,  claims adjustment, actuarial information, and claims administration information], financial risk management and analysis, financial risk analytics, financial risk calculation, financial risk mitigation, financial risk forecasting, financial risk assessment, financial and investment analysis; Providing databases and information in the field of ___ [specify subject, e.g., real estate and real property appraisals] to assist with insurance underwriting; Insurance underwriting information services; Insurance analysis services, namely, ___ [specify type of service in this class, e.g., assessing insurance claims]; Providing online databases using predictive modeling to allow insurance carriers and insurance underwriters to rate and underwrite insurance policies; Providing information and analytics on financial risk relating to specific geographic regions, weather, climate and environmental events, other catastrophes, world events, and other loss events; Providing insurance and financial risk analysis information and information for investors, manufacturers, insurance carriers, commodities traders, investors, and those in the supply chain, in the field of climate, environment, world events, and disaster risk management; Providing financial risk and investment data regarding climate, environment, world events, and disasters for use in the insurance and financial fields; Consulting and information in the field of insurance; Providing information and analytics regarding property locations and characteristics, namely, ___ [specify type of information and analysis in this class, e.g., financial valuation of real estate] for purposes of insurance and financial risk assessment; Providing ratings information, namely, ___ [specify type of information, e.g., credit rating services] used to evaluate insurance and financial risk; Consulting and advisory services in the fields of financial risk assessment, financial and investment analysis; Financial consultancy and financial risk management; Providing a database that contains [delete “investigation results” and reclassify in Class 45] a glossary of technical terms in the field of insurance, covering loss, damage or theft of heavy construction equipment and that is offered via a global communications network for use by insurance companies; Banking consultation; bankruptcy management, namely, ___ [specify type of service in this class, e.g., debt management services] and debt collection consulting and advisory services; providing and analyzing financial data, bankruptcy data, and data about debtors; [delete “electronic filing of bankruptcy claims and other documents in the field of bankruptcy” as not in this class and reclassify in Class 45]; [delete “preparation of forms in the field of bankruptcy” as not in this class and reclassify in Class 45]; financial portfolio valuation and analysis services; analysis of credit and financial risk; financial counseling services; Insurance claims administration; Insurance brokerage services; services to insurance companies, intermediaries and sellers in the nature of assessment and management of medical insurance underwriting risk; services to insurance companies, intermediaries and sellers in the nature of claims adjustments on insurance products; creation and administration of trusts providing healthcare benefits; Providing information and databases in the fields of merchant risk assessment and merchant compliance with customer, industry and/or regulatory obligations, all used to evaluate insurance and financial risk; [delete “Providing an interactive website through which data about vehicles that have been in accidents can be uploaded, information about vehicle insurers can be located, and insurers can be alerted about vehicles in accidents” and reclassify in Class 42 as a computer service]; Providing information about vehicle insurance and underwriting risks, risk assessment and evaluation, and risk management; Providing information about vehicles, namely, ___ [specify type of information, e.g., damage appraisals] to assess insurance and financial risk; Providing information about vehicles, namely, ___ [specify type of information, e.g., damage appraisals] for insurance and financial purposes; Providing vehicle history reports, namely, ___ [specify type of services and contents of reports, e.g., providing information about insurance claims for repairs, accidents and damages]; Providing information on and analysis of fire protection efforts, namely, ___ [specify type of information and analysis, e.g., insurance eligibility review] to assist in underwriting of insurance and financial services products; providing ratings information relating to fire protection efforts, namely, ___ [specify type of information and analysis, e.g., insurance eligibility review] used to evaluate insurance and financial risk; Providing information on and analysis of wildfires and risk associated with wildfires namely, ___ [specify type of information and analysis, e.g., insurance eligibility review], and ratings information relating to wildfires namely, ___ [specify type of information and analysis, e.g., insurance eligibility review]  used to evaluate risk, all of the foregoing used to evaluate insurance and financial risk; consulting and advisory services in the field of insurance; Providing information in the field of insurance claims risk management, namely, information on weather and natural hazards; insurance risk assessment relating to the effects of weather and natural hazards; Providing insurance and financial risk analysis information relating to energy service interruption; providing information in the field of financial risk analysis associated with energy service interruption via the internet; Providing information in the field of insurance, namely, risk analysis information on weather and other perils; providing on-line computer databases featuring risk analysis information about [delete “weather” as not in this class and reclassify in Class 42] perils in the nature of ___ [specify subject in this class, e.g., financial risk]; providing information over a global computer network in the field of financial risk analysis information about weather and other perils; Providing insurance underwriting and insurance rating data, namely, __ [specify type of rating in this class, e.g., financial risk rating data for insurance use] via an online database available on the internet; Compilation and analysis of data for financial purposes to assist in financial risk assessment, and financial and investment analysis; providing insurance and financial risk information, namely, information related to weather events and other catastrophes in the nature of ___ [specify type of information in this class, e.g., information about the effects of such events on premiums], and estimates of insured loss and actual insured loss resulting from catastrophic events, to assist in insurance claims management and analysis, financial risk management and analysis, financial risk assessment, and financial and investment analysis; providing on-line databases featuring insurance and financial risk information, namely, information related to weather-related events and other catastrophes in the nature of ___ [specify type of information in this class, e.g., information about the effects of such events on premiums], and estimates of insured loss and actual insured loss resulting from catastrophic events, all for assessing insurance and financial risk; Providing insurance to value portfolio analysis

 

International Class 37:  Providing an interactive website featuring information, imagery, and analysis, namely, ___ [specify service/topic in this class, e.g., information in the field of construction] of electrical utilities infrastructure; Providing an interactive website featuring information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the fields of] infrastructure construction; Providing information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the field of] construction of electrical utilities infrastructure

 

International Class 41:  Obtaining and providing imagery, namely, ___ [specify type of service in this class, e.g., photography services] in the field of property damage and terrain, to assist in insurance claims administration and analysis, insurance and financial risk management and analysis, financial risk assessment, financial and investment analysis, and real estate valuation, and real estate risk management and analysis

 

International Class 42:  Providing  ___ [specify type of service in this class, e.g., providing temporary use of online, non-downloadable software for] automated claims administration management, tracking, and monitoring of all stages of insurance claims handling; Providing information, imagery, and analysis namely, ___ [specify service/topic in this class, e.g., information in the field of] terrain evaluation in the nature of land evaluation surveying; Providing an interactive website featuring technology through which data about vehicles that have been in accidents can be uploaded, information about vehicle insurers can be located, and insurers can be alerted about vehicles in accidents; providing on-line computer databases featuring risk analysis information about weather and other perils in the nature of ___ [specify type of risk in this class, e.g., computer security risks]

 

International Class 45:  Providing a database that contains investigation results, namely, ____ [specify topic in this class, e.g., claims investigations for fraud prevention] regarding the loss, damage or theft of insured property for use by insurance companies; Providing information in the field of insurance claims, namely, ___ [specify topic in this class, e.g., investigation of insurance claims]; Providing databases and information in the field of insurance, insurance services, insurance analytics, insurance claims, insurance management and analysis, namely, ___ [specify insurance topics in this class, e.g., insurance claims investigations]; Providing information and analytics regarding property locations and characteristics, namely, ___ [specify type of information and analysis service in this class, e.g., compiling crime occurrence data] for purposes of insurance and financial risk assessment; Providing a database that contains investigation results in the field of insurance claims investigations of loss, damage or theft of heavy construction equipment and that is offered via a global communications network for use by insurance companies; bankruptcy management, namely, ___ [specify type of service in this class, e.g., legal services in the field of bankruptcy]; electronic filing of bankruptcy claims and other documents in the field of bankruptcy, namely, public and legal document filing]; preparation of forms in the field of bankruptcy, namely, ___ [specify type of service in this class, e.g., legal document preparation]; Providing vehicle history reports, namely, ___ [specify type of services and contents of reports, e.g., providing reports in the field of vehicle titles]; providing on-line computer databases featuring risk analysis information about perils in the nature of ___ [specify type of risk in this class, e.g., acts of terrorism]

 

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

 

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. 87635483

 

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.