Response to Office Action

V

Insurance Services Office, Inc.

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87635502
LAW OFFICE ASSIGNED LAW OFFICE 115
MARK SECTION
MARK FILE NAME http://uspto.report/TM/87635502/mark.png
LITERAL ELEMENT V
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
ARGUMENT(S)

On May 8, 2018, the Applicant submitted a response to the Office Action dated November 8, 2017, which amended the goods or services identified in the instant application to read as follows:

 

Automatic electronic transmission of notifications of changes in automobile liability insurance policies to state motor vehicle departments; Electronic transmission for others of information on data from aerial, terrestrial, and satellite imagery and other remote sensing technologies, photographic data, geospatial data, locational data, insurance claims, valuations of real estate, buildings, fixtures, and personal property, and building construction cost estimating and valuation via the Internet; Providing online forums for transmission of messages among computer users concerning technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, environment and weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture, and consulting and services related thereto in the nature of consulting services in the field of communications and consulting services to facilitate on-line forums; Providing online forums for users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing online forums for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing multi-user access to a global computer information network for the transfer and dissemination of information relating to the energy, oil and gas, and coal and metals mining industries; Information, advisory and consultancy services in relation to all the aforesaid services; Providing access to databases of information in the field of product regulatory compliance via a global computer network; Providing telecommunications transmission of electronic notifications with information on bankruptcy matters; Providing access over a global computer network to databases and information for use in insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention; Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis; Providing access to a database with information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.

 

The Applicant now submits the following information which identifies the specific goods and/or services that are the subject of transfers to and from other pending applications as requested by the Examining Attorney in her May 10, 2018 Office Action:

 

MISCELLANEOUS DESIGN Class 38  87635502


Items to be transferred FROM this application


Original wording

Amendments, if any

Original Class

Class in Receiving Application

Serial No. of Receiving Application

Providing electronic notifications with information on bankruptcy matters.

Providing electronic notifications with information on bankruptcy matters, namely, provision of financial notifications in the field of bankruptcy via email alerts.

38

36

87/635,483

Providing on-line forums in the nature of webinars and on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

Providing on-line webinars in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

38

41

87/635,514

Providing on-line forums in the nature of webinars and on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

 

Providing on-line forums in the nature of webinars and on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

Providing a website featuring technology that enables users to engage in on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

 

 

 

 

Providing a website featuring technology that enables users to engage in on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

38

42

87/536,527

 


Items to be transferred INTO this application


Original wording

Amendments, if any

Original Class

Class in Receiving Application

Serial No. of Original Application

Providing online publications in the nature of websites, reports, briefs, bulletins and newsletters in the field of insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis.

Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis.

41

38

87/635,514

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.

No amendments.

 

 

 

 

No amendments.

42

38

87/536,527

Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts providing news related to laws and regulations impacting the insurance industry.

Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.

45

38

87/635,554

 

The Applicant would also like to clarify that in addition to the amendments noted above concerning the transfers to and from other pending applications, other amendments were made to the goods or services identified in the instant application in the Office Action response dated May 8, 2018.  However, the additional amendments were not transfers between classes and consisted of amendments to the existing identification within the class of the instant application. 

SIGNATURE SECTION
RESPONSE SIGNATURE /Michael Friscia/
SIGNATORY'S NAME Michael R. Friscia
SIGNATORY'S POSITION Attorney of record, NJ bar member
SIGNATORY'S PHONE NUMBER 973-622-4444
DATE SIGNED 11/13/2018
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Nov 13 14:36:55 EST 2018
TEAS STAMP USPTO/ROA-XX.XX.XX.XX-201
81113143655728428-8763550
2-610b62efaa6dfb36f84d066
668d37bbd6313a5cb739a3a65
8437e952ccae7125c70-N/A-N
/A-20181113111041458371



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 87635502 V (Stylized and/or with Design, see http://uspto.report/TM/87635502/mark.png) has been amended as follows:

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

On May 8, 2018, the Applicant submitted a response to the Office Action dated November 8, 2017, which amended the goods or services identified in the instant application to read as follows:

 

Automatic electronic transmission of notifications of changes in automobile liability insurance policies to state motor vehicle departments; Electronic transmission for others of information on data from aerial, terrestrial, and satellite imagery and other remote sensing technologies, photographic data, geospatial data, locational data, insurance claims, valuations of real estate, buildings, fixtures, and personal property, and building construction cost estimating and valuation via the Internet; Providing online forums for transmission of messages among computer users concerning technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, catastrophes, climate, environment and weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture, and consulting and services related thereto in the nature of consulting services in the field of communications and consulting services to facilitate on-line forums; Providing online forums for users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing online forums for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture; Providing multi-user access to a global computer information network for the transfer and dissemination of information relating to the energy, oil and gas, and coal and metals mining industries; Information, advisory and consultancy services in relation to all the aforesaid services; Providing access to databases of information in the field of product regulatory compliance via a global computer network; Providing telecommunications transmission of electronic notifications with information on bankruptcy matters; Providing access over a global computer network to databases and information for use in insurance, risk management, risk assessment, and risk analysis, all relating to loss prevention; Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis; Providing access to a database with information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Electronic transmittal of information and analysis concerning the natural hazards that have occurred at property addresses or locations identified by latitude and longitude; Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.

 

The Applicant now submits the following information which identifies the specific goods and/or services that are the subject of transfers to and from other pending applications as requested by the Examining Attorney in her May 10, 2018 Office Action:

 

MISCELLANEOUS DESIGN Class 38  87635502


Items to be transferred FROM this application


Original wording

Amendments, if any

Original Class

Class in Receiving Application

Serial No. of Receiving Application

Providing electronic notifications with information on bankruptcy matters.

Providing electronic notifications with information on bankruptcy matters, namely, provision of financial notifications in the field of bankruptcy via email alerts.

38

36

87/635,483

Providing on-line forums in the nature of webinars and on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

Providing on-line webinars in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

38

41

87/635,514

Providing on-line forums in the nature of webinars and on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

 

Providing on-line forums in the nature of webinars and on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

Providing a website featuring technology that enables users to engage in on-line discussions, which allow users to exchange information and research, provide and receive feedback, and engage in peer review, regarding research in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and mobile remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

 

 

 

 

Providing a website featuring technology that enables users to engage in on-line discussions, for on-line collaboration in the fields of technology, use of imagery, geospatial intelligence and analysis, manned and unmanned aerial vehicles and related technology in the nature of computer vision technology and other remote sensing technologies, insurance, real estate, building and construction, climate, environment, catastrophes, weather events and issues, surveillance, energy, natural resources, geopolitics, and agriculture.

38

42

87/536,527

 


Items to be transferred INTO this application


Original wording

Amendments, if any

Original Class

Class in Receiving Application

Serial No. of Original Application

Providing online publications in the nature of websites, reports, briefs, bulletins and newsletters in the field of insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis.

Providing online electronic bulletin boards for transmission of messages among computer users concerning insurance, risk management and analysis, risk analytics, risk calculation, risk mitigation, risk forecasting, financial risk assessment and financial and investment analysis.

41

38

87/635,514

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.

No amendments.

 

 

 

 

No amendments.

42

38

87/536,527

Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts providing news related to laws and regulations impacting the insurance industry.

Providing notifications for retail businesses about information and investigations regarding potential employee and customer fraud and theft, via electronic message alerts, namely, telecommunications transmission of email notification alerts.

45

38

87/635,554

 

The Applicant would also like to clarify that in addition to the amendments noted above concerning the transfers to and from other pending applications, other amendments were made to the goods or services identified in the instant application in the Office Action response dated May 8, 2018.  However, the additional amendments were not transfers between classes and consisted of amendments to the existing identification within the class of the instant application. 



SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 11/13/2018
Signatory's Name: Michael R. Friscia
Signatory's Position: Attorney of record, NJ bar member

Signatory's Phone Number: 973-622-4444

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

        
Serial Number: 87635502
Internet Transmission Date: Tue Nov 13 14:36:55 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201811131436557284
28-87635502-610b62efaa6dfb36f84d066668d3
7bbd6313a5cb739a3a658437e952ccae7125c70-
N/A-N/A-20181113111041458371



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