NOTE TO THE FILE
Sent to TICRS as Serial Number: 88217262SERIAL NUMBER: 88264119
DATE: 08/23/2019
NAME: jgagliardi
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Kastner, Drew [mailto:dkastner@schnader.com]
Sent: Thursday, August 22, 2019 12:15 PM
To: Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV>
Cc: Bittinger, Kimberly <kbittinger@schnader.com>
Subject: Response to Office Actions - Radian Group Inc.
Dear Examiner Gagliardi:
Further to our email correspondence, please see the further revisions as per our correspondence. Kindly proceed with the following amendments to the applications below via Examiner’s Amendment:
Application No. 88/217,262 “RADIAN & Design”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdrawn.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/263,935 “RADIAN VALUATION SERVICES”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete Class 36 from the application.
7) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “VALUATION SERVICES” apart from the mark as shown.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdrawn.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
U.S. Application No. 88/264,106 “RADIAN TITLE AGENCY OF TEXAS”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, real estate title insurance underwriting services, and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “TITLE AGENCY OF TEXAS” apart from the mark as shown.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdrawn.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
U.S. Application No. 88/264,119 “RADIAN TITLE INSURANCE”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, real estate title insurance underwriting services, and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “TITLE INSURANCE” apart from the mark as shown.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdrawn.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/264,266 “RADIAN SETTLEMENT CONSULTING SERVICES”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete the services of Class 36 from the application
5) Please amend the goods and services as per your recommendations to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
6) Please enter the following disclaimer: No claim is made to the exclusive right to use “SETTLEMENT CONSULTING SERVICES” apart from the mark as shown.
7) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw
8) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/265,853 “RADIAN TECHNOLOGY SERVICES”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete the services of Class 36 from the application.
8) Please amend the goods and services as per your recommendations to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “TECHNOLOGY SERVICES” apart from the mark as shown.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/265,861 “RADIAN SETTLEMENT SERVICES”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete the services of Class 36 from the application.
9) Please amend the goods and services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “SETTLEMENT SERVICES” apart from the mark as shown.
6) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw.
7) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/267,033 “RADIAN RISK SERVICES & Logo Design”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “RISK SERVICES” apart from the mark as shown.
6) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral. The wording “RISK SERVICES” appears in a stylized lowercase font in the color teal beneath the wording “RADIAN”
7) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw.
8) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/267,036 “RADIAN MORTGAGE SERVICES & Logo Design”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete the services of Class 36 from the application
5) Please amend the description of the services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
6) Please enter the following disclaimer: No claim is made to the exclusive right to use “MORTGAGE SERVICES” apart from the mark as shown.
7) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral. The wording “MORTGAGE SERVICES” appears in a stylized lowercase font in the color teal beneath the wording “RADIAN”
8) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw.
9) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/267,057 “RADIAN REAL ESTATE SERVICES & Logo Design”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please delete the services of Class 36 from the application
9) Please amend the description of the services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “REAL ESTATE SERVICES” apart from the mark as shown.
6) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral. The wording “MORTGAGE SERVICES” appears in a stylized lowercase font in the color teal beneath the wording “RADIAN”
7) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw
8) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/267,061 “RADIAN MORTGAGE INSURANCE & LOGO DESIGN”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the identification of services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “MORTGAGE INSURANCE” apart from the mark as shown.
6) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral. The wording “MORTGAGE INSURANCE” appears in a stylized lowercase font in the color teal beneath the wording “RADIAN”
7) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw
8) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Application No. 88/267,271 “RADIAN TITLE SERVICES & Logo Design”
1) Please move the goods of Class 9 to Class 42.
2) Please delete the words “computer software” from the new Class 42.
3) Please delete the words “business management services” from Class 35.
4) Please amend the services to the following:
Class 35 - Monitoring real estate loans and portfolios for business purposes; employment staffing, recruiting, and outsourcing services in the field of real estate
Class 36 - Insurance services, namely financial guaranty insurance administration, claims processing and underwriting, financial guaranty reinsurance administration, claims processing and underwriting, real estate title insurance underwriting services and mortgage guaranty insurance administration, claims processing and underwriting
Class 42 - Providing temporary use of non-downloadable computer software supplied from the Internet to allow users to interface with internal systems to make insurance and financial applications and transact business; provide temporary use of non-downloadable computer software relating to insurance and financial services for providing insurance and financial advice; provide temporary use of non-downloadable computer software to enable the searching of data, and the processing of data; provide temporary use of non-downloadable computer software that calculates mortgage financing options used to provide mortgage guaranty insurance services; Providing temporary use of non-downloadable computer software used for real estate brokerage services
5) Please enter the following disclaimer: No claim is made to the exclusive right to use “TITLE SERVICES” apart from the mark as shown.
6) Please amend the description of the mark to: The mark consists of the wording “RADIAN” in navy blue lowercase font. The “I” in the wording “RADIAN” is dotted with a teal quadrilateral. The wording “TITLE SERVICES” appears in a stylized lowercase font in the color teal beneath the wording “RADIAN”
7) Since it appears that Applications No. 87976393 has now been abandoned, it is respectfully suggested that the citation of this application as a potential bar to the instant application should be withdraw
8) Applicant requests that the application be suspended until cited application No. 87381105 is abandoned.
Further to our previous correspondence, we believe that the further amendments for each application and the correction regarding the cited applications addresses the issues of the office action. We respectfully request that you enter an Examiner’s Amendment for each application.
We look forward to hearing from you further regarding these applications. Should you have any questions, please contact me.
Best Regards,
Drew