Response to Office Action

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

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

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

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87635507 V (Stylized and/or with Design, see http://uspto.report/TM/87635507/mark.png) has been amended as follows:

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

In response to the Examining Attorney’s Office Action dated November 26, 2018, the Applicant is modifying its recitation of services in this application to read as follows:

Rental of unmanned aerial vehicles; Providing an interactive website featuring information in the field of transportation; Providing information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Providing information and analysis in the fields of energy and supply chain logistics, namely, about storage, transportation and delivery of goods by air, ship and rail; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy distribution disruptions; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy distribution disruptions; Consulting in the fields of piloting manned and unmanned aerial vehicles, and energy in the nature of energy distribution and distribution disruptions; Consulting in the field of energy in the field of technology for distribution of energy; Providing online databases, information and consulting in the field of pipeline transmission, supply of electricity via grids, energy distribution and disruption of distribution.

Below is the Applicant’s current recitation of services with tracked changes noted:

Rental of unmanned aerial vehicles; Providing an interactive website featuring information, imagery, and analysis, namely, information in the field of transportation; Providing information, imagery, and analysis, namely, information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Consulting services in the field of energy, namely, for purposes of risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing information, imagery, and analysis in the fields of energy and supply chain logistics, namely, about storage, transportation and delivery of goods by air, ship and rail supply chain security, cargo theft trends and recovery assistance to aid motor carriers, manufacturers, retailers, and insurance and logistics companies in mitigating cargo theft and fraud, and monitoring and tracking of cargo, inventory, vehicles, and equipment for supply chain theft prevention purposes, and about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, energy distribution and energy disruption; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy distribution disruptions; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy distribution disruptions; Consulting and services related thereto in the nature of consultation in the fields of piloting manned and unmanned aerial vehicles in the nature of piloting of aerial vehicles, catastrophes in the nature of providing information about risks associated with man-made perils, and energy in the nature of energy distribution and distribution disruptions; Providing information about pre-travel emergency services, namely, information about risks associated with medical conditions and medical emergencies.

The Applicant has also added the following services into the instant application from its co-pending application for the Applicant’s mark that was filed on the same day as the instant application:

From Class 42 App. No._87635527

Consulting in the field of energy in the field of technology for distribution of energy; and

Providing online databases, information and consulting in the field of pipeline transmission, supply of electricity via grids, energy distribution and disruption of distribution.

 

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

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Rental of unmanned aerial vehicles; Providing an interactive website featuring information, imagery, and analysis, namely, information in the field of transportation; Providing information, imagery, and analysis, namely, information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Consulting services in the field of energy, namely, for purposes of risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing information, imagery, and analysis in the fields of energy and supply chain logistics, namely, about supply chain security, cargo theft trends and recovery assistance to aid motor carriers, manufacturers, retailers, and insurance and logistics companies in mitigating cargo theft and fraud, and monitoring and tracking of cargo, inventory, vehicles, and equipment for supply chain theft prevention purposes, and about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, energy distribution and energy disruption; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy disruption; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy disruption; Consulting and services related thereto in the nature of consultation in the fields of manned and unmanned aerial vehicles in the nature of piloting of aerial vehicles, catastrophes in the nature of providing information about risks associated with man-made perils, and energy in the nature of energy distribution and disruption; Providing information about pre-travel emergency services, namely, information about risks associated with medical conditions and medical emergencies
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Rental of unmanned aerial vehicles; Providing an interactive website featuring information, imagery, and analysis, namely, information in the field of transportation; Providing an interactive website featuring information in the field of transportation; Providing information, imagery, and analysis, namely, information in the field of transportation; Providing information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Consulting services in the field of energy, namely, for purposes of risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing information and analysis in the fields of energy and supply chain logistics, namely, about storage, transportation and delivery of goods by air, ship and rail; Providing information, imagery, and analysis in the fields of energy and supply chain logistics, namely, about supply chain security, cargo theft trends and recovery assistance to aid motor carriers, manufacturers, retailers, and insurance and logistics companies in mitigating cargo theft and fraud, and monitoring and tracking of cargo, inventory, vehicles, and equipment for supply chain theft prevention purposes, and about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, energy distribution and energy disruption; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy distribution disruptions; Providing online databases and information about energy, namely, energy distribution and energy disruption; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy distribution disruptions; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy disruption; Consulting in the fields of piloting manned and unmanned aerial vehicles, and energy in the nature of energy distribution and distribution disruptions; Consulting and services related thereto in the nature of consultation in the fields of manned and unmanned aerial vehicles in the nature of piloting of aerial vehicles, catastrophes in the nature of providing information about risks associated with man-made perils, and energy in the nature of energy distribution and disruption; Consulting in the field of energy in the field of technology for distribution of energy; Providing information about pre-travel emergency services, namely, information about risks associated with medical conditions and medical emergencies; Providing online databases, information and consulting in the field of pipeline transmission, supply of electricity via grids, energy distribution and disruption of distribution.Class 039 for Rental of unmanned aerial vehicles; Providing an interactive website featuring information in the field of transportation; Providing information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Providing information and analysis in the fields of energy and supply chain logistics, namely, about storage, transportation and delivery of goods by air, ship and rail; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy distribution disruptions; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy distribution disruptions; Consulting in the fields of piloting manned and unmanned aerial vehicles, and energy in the nature of energy distribution and distribution disruptions; Consulting in the field of energy in the field of technology for distribution of energy; Providing online databases, information and consulting in the field of pipeline transmission, supply of electricity via grids, energy distribution and disruption of distribution.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 05/28/2019
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: 87635507
Internet Transmission Date: Tue May 28 14:41:02 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201905281441029417
06-87635507-620a12b122e6433b25cf093d01ee
187bd86568cc79f6dec99653e8171e3126f6f-N/
A-N/A-20190528105251378444