Response to Office Action

ALLUMA

CMFG Life Insurance Company

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 88376049
LAW OFFICE ASSIGNED LAW OFFICE 106
MARK SECTION
MARK http://uspto.report/TM/88376049/mark.png
LITERAL ELEMENT ALLUMA
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)

Please see actual argument text attached within the Evidence Section.

EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_16224823482-20191105112940983377_._ResponseTextAndExhibits_Filed110519__A3608347x9DEB4_.pdf
       CONVERTED PDF FILE(S)
       (36 pages)
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DESCRIPTION OF EVIDENCE FILE response text
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Downloadable computer software and downloadable mobile applications featuring information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application featuring information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industries
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Downloadable computer software and downloadable mobile applications featuring information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; Downloadable computer software and downloadable mobile applications for providing information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application featuring information on vehicle lending services; downloadable software in the nature of a mobile application for providing information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industries
FINAL DESCRIPTION
Downloadable computer software and downloadable mobile applications for providing information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application for providing information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industries
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (035)(current)
INTERNATIONAL CLASS 035
DESCRIPTION
Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (035)(proposed)
INTERNATIONAL CLASS 035
TRACKED TEXT DESCRIPTION
Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing; providing complimentary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, providing business administration in the fields of debt protection and guaranteed asset protection plans and automobile mechanical repair service contracts
FINAL DESCRIPTION
Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing; providing complimentary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, providing business administration in the fields of debt protection and guaranteed asset protection plans and automobile mechanical repair service contracts
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (036)(current)
INTERNATIONAL CLASS 036
DESCRIPTION
Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, credit insurance, debt protection, mechanical repair coverage, mortgage payment protection, guaranteed asset protection, and collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment funding
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (036)(proposed)
INTERNATIONAL CLASS 036
TRACKED TEXT DESCRIPTION
Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; insurance services, namely, administration and brokerage of automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, credit insurance, debt protection, mechanical repair coverage, mortgage payment protection, guaranteed asset protection, and collateral protection; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, underwriting credit insurance, providing financial administration in the fields of debt protection plans, guaranteed asset protection plans, and automobile mechanical repair service contracts, and providing administration of collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment funding
FINAL DESCRIPTION
Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage of automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, underwriting credit insurance, providing financial administration in the fields of debt protection plans, guaranteed asset protection plans, and automobile mechanical repair service contracts, and providing administration of collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment funding
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (038)(no change)
GOODS AND/OR SERVICES SECTION (041)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; all of the foregoing directed to the insurance, lending, and financial services industries; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; all of the foregoing directed to the insurance, lending, and financial services industries
FINAL DESCRIPTION
Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; all of the foregoing directed to the insurance, lending, and financial services industries
FILING BASIS Section 1(b)
ATTORNEY SECTION (current)
NAME Christopher J. Hussin
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME BOARDMAN & CLARK LLP
STREET 1 S. PINCKNEY ST., STE. 410
CITY MADISON
STATE Wisconsin
POSTAL CODE 53703
COUNTRY US
PHONE 608-257-9521
FAX 608-283-1709
EMAIL docket_chussin@boardmanclark.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 53747-175
ATTORNEY SECTION (proposed)
NAME Christopher J. Hussin
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME BOARDMAN & CLARK LLP
STREET 1 S. PINCKNEY ST., STE. 410
CITY MADISON
STATE Wisconsin
POSTAL CODE 53701-0927
COUNTRY United States
PHONE 608-286-7229
FAX 608-283-1709
EMAIL docket_chussin@boardmanclark.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 53747-175
CORRESPONDENCE SECTION (current)
NAME CHRISTOPHER J. HUSSIN
FIRM NAME BOARDMAN & CLARK LLP
STREET 1 S. PINCKNEY ST., STE. 410
CITY MADISON
STATE Wisconsin
POSTAL CODE 53703
COUNTRY US
PHONE 608-257-9521
FAX 608-283-1709
EMAIL docket_chussin@boardmanclark.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 53747-175
CORRESPONDENCE SECTION (proposed)
NAME Christopher J. Hussin
FIRM NAME BOARDMAN & CLARK LLP
STREET 1 S. PINCKNEY ST., STE. 410
CITY MADISON
STATE Wisconsin
POSTAL CODE 53701-0927
COUNTRY United States
PHONE 608-286-7229
FAX 608-283-1709
EMAIL docket_chussin@boardmanclark.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 53747-175
SIGNATURE SECTION
RESPONSE SIGNATURE /chris hussin/
SIGNATORY'S NAME Christopher J. Hussin
SIGNATORY'S POSITION Attorney of Record
SIGNATORY'S PHONE NUMBER 608-286-7229
DATE SIGNED 11/05/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Nov 05 11:59:46 EST 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XX-
20191105115946424501-8837
6049-700346115b5c49666df7
165cf1ccf08740bbda80deb43
8bf4488f5301a99d7dcdf-N/A
-N/A-20191105114917619412



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. 88376049 ALLUMA(Standard Characters, see http://uspto.report/TM/88376049/mark.png) has been amended as follows:

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

Please see actual argument text attached within the Evidence Section.



EVIDENCE
Evidence in the nature of response text has been attached.
Original PDF file:
evi_16224823482-20191105112940983377_._ResponseTextAndExhibits_Filed110519__A3608347x9DEB4_.pdf
Converted PDF file(s) ( 36 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer software and downloadable mobile applications featuring information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application featuring information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industries
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: Downloadable computer software and downloadable mobile applications featuring information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; Downloadable computer software and downloadable mobile applications for providing information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application featuring information on vehicle lending services; downloadable software in the nature of a mobile application for providing information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industriesClass 009 for Downloadable computer software and downloadable mobile applications for providing information on vehicle lending services, vehicle valuations, vehicle lending and financing information, and vehicle loan interest rates; downloadable software in the nature of a mobile application for providing information on vehicle lending services; downloadable software and downloadable mobile applications for automating the savings process with automatic transfers, all of the foregoing directed to the insurance, lending, and financial services industries
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing
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: Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing; providing complimentary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, providing business administration in the fields of debt protection and guaranteed asset protection plans and automobile mechanical repair service contractsClass 035 for Business management consulting in the field of financial advisory practices; providing business advice and information in the field of insurance, lending and financial services via provision of business data analysis, preparation of business reports, business strategy development and consulting services, and business research and data analysis services; promoting and marketing the goods and services of others; business data analysis; collecting, analyzing and compiling business and marketing data, statistics and other sources of information; analysis of market research data and statistics; business research and data analysis services; data collecting, compiling and analysis in the field of insurance; business assistance services, namely, assisting credit unions and other companies with customer follow-up to improve customer outcomes and satisfaction; advice on the analysis of consumer habits and needs provided with the help of data; advertising, promotion, and marketing services; market research and business analysis; market research and intelligence services and consulting related thereto; market analysis; collection, provision and analysis of market research data and statistics; consulting and advisory services in the field of marketing; providing complimentary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, providing business administration in the fields of debt protection and guaranteed asset protection plans and automobile mechanical repair service contracts
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, credit insurance, debt protection, mechanical repair coverage, mortgage payment protection, guaranteed asset protection, and collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment funding
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: Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; insurance services, namely, administration and brokerage of automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, credit insurance, debt protection, mechanical repair coverage, mortgage payment protection, guaranteed asset protection, and collateral protection; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, underwriting credit insurance, providing financial administration in the fields of debt protection plans, guaranteed asset protection plans, and automobile mechanical repair service contracts, and providing administration of collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment fundingClass 036 for Assessing insurance claims; insurance brokerage services; insurance premium rate computing; insurance claims processing; insurance actuarial services; insurance services, namely, underwriting, administration, and brokerage of life, disability and annuity insurance; insurance and financial services, namely, providing financial assistance to families and individuals for necessities of life and emergency expenses in the event of an unforeseen financial hardship due to an extended illness or disability, layoff, job elimination, business closing or an employer-initiated termination or separation from employment; insurance services, namely, administration and brokerage of automobile, home and health insurance, cyber and security incident insurance, worker's compensation insurance and creditor-placed insurance; property and casualty and fidelity insurance services, namely, writing property and business liability insurance, professional liability insurance, credit card fraud insurance, property, management liability insurance, fiduciary liability insurance, lenders liability insurance, employment practices liability insurance, blanket collateral protection insurance, public officials liability insurance and business auto insurance; insurance services, namely, writing fidelity bonds; administration and underwriting of health and medical insurance for animals and pets; financial analysis; financial advice; financial planning; financial consultation; financial forecasting; providing financial advisory services to consumers; life-event planning for financial investment purposes; financial retirement plan consulting; providing financial advisory services to advisors, employers and their employees; financial investment brokerage services; financial administration of qualified and non-qualified retirement plans and investment platforms; financial administration of employee pension plans as a third party administrator; providing lending program plans to financial institutions in the nature of consumer lending services; financial data analysis; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; consumer lending services, mortgage lending services; providing complementary products and protections for consumer loans through financial institutions to protect the loan and/or collateral for the borrower, namely, underwriting credit insurance, providing financial administration in the fields of debt protection plans, guaranteed asset protection plans, and automobile mechanical repair service contracts, and providing administration of collateral protection; charitable foundation services, namely, providing financial assistance for programs and services of others; charitable foundation services, namely, charitable fundraising to provide funding, grants, scholarships and/or financial assistance for others, and/or programs and services of others; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships, and financial assistance for programs and services of others; providing venture capital, venture capital financing, development capital, private equity and investment funding
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; all of the foregoing directed to the insurance, lending, and financial services industries; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom
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: Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance, and technical software consulting related thereto; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; all of the foregoing directed to the insurance, lending, and financial services industriesClass 042 for Data warehousing; data mining; providing an online non-downloadable Internet-based system application featuring technology enabling users in the nature of financial institutions to offer loan options and enable consumers of loans to engage in the process of securing loans, where consumers of loans may access the technology online or via mobile websites; providing temporary use of non-downloadable computer software for use in viewing and analyzing data in the fields of personal finance, financial planning, and retirement planning, and capturing and processing loan applications received from mobile devices; providing a website featuring non-downloadable software for use in financial planning, and for advising on, quoting, issuing and customizing guaranteed asset products, credit insurance, debt protection, mechanical repair coverage plans and policies; software as a service (SaaS) provider featuring software in the field of the financial services industry for financial data integration, extraction, ingestion, management, governance and warehousing; software as a service (SaaS) services featuring software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; providing temporary use of non-downloadable cloud-based software for use in data integration, data transformation, data quality management, big data and data analytics, data management, and data governance; software as a service (SaaS) services, namely, hosting software for use by others for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; providing temporary use of online non-downloadable software and web-based applications for processing loans and refinancing loans, processing loan and refinancing inquiries and applications, loan and refinancing origination and administration, enabling borrowers and potential borrowers to complete, execute, provide and/or upload related documents thereto, and providing notifications and instructions to borrowers therefrom; all of the foregoing directed to the insurance, lending, and financial services industries
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.

The applicant's current attorney information: Christopher J. Hussin. Christopher J. Hussin of BOARDMAN & CLARK LLP, is located at

      1 S. PINCKNEY ST., STE. 410
      MADISON, Wisconsin 53703
      US
The docket/reference number is 53747-175.

The phone number is 608-257-9521.

The fax number is 608-283-1709.

The email address is docket_chussin@boardmanclark.com

The applicants proposed attorney information: Christopher J. Hussin. Christopher J. Hussin of BOARDMAN & CLARK LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1 S. PINCKNEY ST., STE. 410
      MADISON, Wisconsin 53701-0927
      United States
The docket/reference number is 53747-175.

The phone number is 608-286-7229.

The fax number is 608-283-1709.

The email address is docket_chussin@boardmanclark.com

Christopher J. Hussin submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: CHRISTOPHER J. HUSSIN. CHRISTOPHER J. HUSSIN of BOARDMAN & CLARK LLP, is located at

      1 S. PINCKNEY ST., STE. 410
      MADISON, Wisconsin 53703
      US
The docket/reference number is 53747-175.

The phone number is 608-257-9521.

The fax number is 608-283-1709.

The email address is docket_chussin@boardmanclark.com

The applicants proposed correspondence information: Christopher J. Hussin. Christopher J. Hussin of BOARDMAN & CLARK LLP, is located at

      1 S. PINCKNEY ST., STE. 410
      MADISON, Wisconsin 53701-0927
      United States
The docket/reference number is 53747-175.

The phone number is 608-286-7229.

The fax number is 608-283-1709.

The email address is docket_chussin@boardmanclark.com

SIGNATURE(S)
Response Signature
Signature: /chris hussin/     Date: 11/05/2019
Signatory's Name: Christopher J. Hussin
Signatory's Position: Attorney of Record

Signatory's Phone Number: 608-286-7229

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    CHRISTOPHER J. HUSSIN
   BOARDMAN & CLARK LLP
   
   1 S. PINCKNEY ST., STE. 410
   MADISON, Wisconsin 53703
Mailing Address:    Christopher J. Hussin
   BOARDMAN & CLARK LLP
   1 S. PINCKNEY ST., STE. 410
   MADISON, Wisconsin 53701-0927
        
Serial Number: 88376049
Internet Transmission Date: Tue Nov 05 11:59:46 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201911051159464
24501-88376049-700346115b5c49666df7165cf
1ccf08740bbda80deb438bf4488f5301a99d7dcd
f-N/A-N/A-20191105114917619412


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