Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  January 05, 2022

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Amendment to Identification of Goods and/or Services Required
• Partial Abandonment Advisory

 

 

Amendment to Identification of Goods and/or Services Required

 

Applicant must clarify the following indicated language for reasons stated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

 

Class 9	Issue:	Suggestion:
Computer application software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk	Indefinite and overly broad and must be clarified because the specific downloadable or non-downloadable nature of the good or service is unclear and could identify goods or services in multiple classes.	Downloadable computer application software for monitoring, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers in order to assess driver behavior and risk from third-party applications
computer application software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users	Indefinite and overly broad and must be clarified because the specific downloadable or non-downloadable nature of the good or service is unclear and could identify goods or services in multiple classes.	Downloadable computer application software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, and for providing information related to driving to users
computer application software for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages	Indefinite and overly broad and must be clarified because the specific downloadable or non-downloadable nature of the good or service is unclear and could identify goods or services in multiple classes.	Downloadable computer application software for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages
downloadable software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk	Acceptable	downloadable software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, and for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk
downloadable software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages	Acceptable	downloadable software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages
kits composed of software development tools	Indefinite and overly broad and must be clarified because the specific downloadable or non-downloadable nature of the good or service is unclear and could identify goods or services in multiple classes.	Software development kits comprised primarily of downloadable computer software development tools
Class 35
Arranging and conducting incentive reward programs for business purposes, namely, providing reward services to businesses to incentivize consumer behaviors	Indefinite and must be clarified because the specific nature of the service is unclear.	Arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program} to incentivize consumer behavior
providing consumer information services and making referrals in the field of automobile repair services	Acceptable	providing consumer information services and making referrals in the field of automobile repair services
electronic data collection and data submission services in the field of insurance	Acceptable	electronic data collection and data submission services in the field of insurance
Class 36
Consulting and information concerning insurance	Acceptable	Consulting and information concerning insurance
providing information on insurance matters	Acceptable	providing information on insurance matters
providing information on financial risks	Acceptable	providing information on financial risks
Class 42
Providing temporary use of non-downloadable, cloud-based software for monitoring telematics, for collecting, analyzing, managing, storing, and reporting business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback	Acceptable	Providing temporary use of non-downloadable, cloud-based software for monitoring telematics, for collecting, analyzing, managing, storing, and reporting business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for monitoring speed, driving time, driving hour, brake activity, and other driving habits, and for providing driver scores and feedback
providing temporary use of non-downloadable, cloud-based software for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages, for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk	Acceptable	providing temporary use of non-downloadable, cloud-based software for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages, for collecting, analyzing, managing, and for storing business and data from third-party applications in order to assess driver behavior and risk
platform as a service (paas) featuring computer software platforms for collecting, analyzing, managing, storing, and reporting data	Acceptable	platform as a service (paas) featuring computer software platforms for collecting, analyzing, managing, storing, and reporting data
technical support services, namely, troubleshooting of computer software platform problems	Acceptable	technical support services, namely, troubleshooting of computer software platform problems
technical consulting services in the field of designing and engineering electronic sensors	Acceptable	technical consulting services in the field of designing and engineering electronic sensors
Software as a service (saas) services featuring software for compiling and analyzing a motorist's driving data all for providing information regarding driver risk	Acceptable	Software as a service (saas) services featuring software for compiling and analyzing a motorist's driving data all for providing information regarding driver risk
computer software for the collection of motorist telematics data	Indefinite and overly broad and must be clarified because the specific downloadable or non-downloadable nature of the good or service is unclear and could identify goods or services in multiple classes.	Providing temporary use of non-downloadable computer software for collecting motorist telematics data
data acquisition and collection for driver risk assessment and analysis	Acceptable	data acquisition and collection for driver risk assessment and analysis
Class 45
Vehicle and driver telematics services in the nature of providing information concerning safety risks on driver behavior	Acceptable	Vehicle and driver telematics services in the nature of providing information concerning safety risks on driver behavior
providing information on personal and commercial business safety risks	Indefinite and must be clarified because the specific nature of the service is unclear and could identify services in multiple classes	Class 35:   Providing information of commercial business safety risks in the nature of business risk management

 

 

 

Class 9:

 

Downloadable computer application software for monitoring, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers in order to assess driver behavior and risk from third-party applications; Downloadable computer application software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, and for providing information related to driving to users; Downloadable computer application software for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages

downloadable software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, and for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk; downloadable software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages; Software development kits comprised primarily of downloadable computer software development tools

 

Class 35:

 

Arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program} to incentivize consumer behavior; providing consumer information services and making referrals in the field of automobile repair services; electronic data collection and data submission services in the field of insurance

 

Class 36:

 

Consulting and information concerning insurance; providing information on insurance matters; providing information on financial risks

 

Class 42:

 

Providing temporary use of non-downloadable, cloud-based software for monitoring telematics, for collecting, analyzing, managing, storing, and reporting business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for monitoring speed, driving time, driving hour, brake activity, and other driving habits, and for providing driver scores and feedback; providing temporary use of non-downloadable, cloud-based software for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages, for collecting, analyzing, managing, and for storing business and data from third-party applications in order to assess driver behavior and risk; platform as a service (paas) featuring computer software platforms for collecting, analyzing, managing, storing, and reporting data; technical support services, namely, troubleshooting of computer software platform problems; technical consulting services in the field of designing and engineering electronic sensors; Software as a service (saas) services featuring software for compiling and analyzing a motorist's driving data all for providing information regarding driver risk; Providing temporary use of non-downloadable computer software for collecting motorist telematics data; data acquisition and collection for driver risk assessment and analysis

 

Class 45:

 

Vehicle and driver telematics services in the nature of providing information concerning safety risks on driver behavior

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in the following International Class(es) will be deleted from the application: 

 

Class 9:

 

Computer application software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk; computer application software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users; computer application software for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages; kits composed of software development tools

 

Class 35:

 

Arranging and conducting incentive reward programs for business purposes, namely, providing reward services to businesses to incentivize consumer behaviors

 

Class 42:

 

computer software for the collection of motorist telematics data

 

 

Class 45:

 

providing information on personal and commercial business safety risks

 

The application will then proceed with the following goods and/or services in the following International Class(es) only:

 

Class 9:

 

downloadable software for monitoring telematics, for collecting, analyzing, managing, and storing business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, and for collecting, analyzing, managing, and storing business and data from third-party applications in order to assess driver behavior and risk; downloadable software for monitoring speed, driving time, driving hour, brake activity, and other driving habits, for providing driver scores and feedback, for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages;

 

Class 35:

 

providing consumer information services and making referrals in the field of automobile repair services; electronic data collection and data submission services in the field of insurance

 

Class 36:

 

Consulting and information concerning insurance; providing information on insurance matters; providing information on financial risks

 

Class 42:

 

Providing temporary use of non-downloadable, cloud-based software for monitoring telematics, for collecting, analyzing, managing, storing, and reporting business and data related to driving conditions, weather, motorists, vehicles, and vehicle insurance consumers, for monitoring speed, driving time, driving hour, brake activity, and other driving habits, and for providing driver scores and feedback; providing temporary use of non-downloadable, cloud-based software for providing parking reminders, for providing information related to driving to users, for providing information related to car maintenance and mechanical repair services and providers, for providing roadside assistance information, and for sending and receiving electronic messages, for collecting, analyzing, managing, and for storing business and data from third-party applications in order to assess driver behavior and risk; platform as a service (paas) featuring computer software platforms for collecting, analyzing, managing, storing, and reporting data; technical support services, namely, troubleshooting of computer software platform problems; technical consulting services in the field of designing and engineering electronic sensors; Software as a service (saas) services featuring software for compiling and analyzing a motorist's driving data all for providing information regarding driver risk; data acquisition and collection for driver risk assessment and analysis

Class 45:

 

Vehicle and driver telematics services in the nature of providing information concerning safety risks on driver behavior

 

  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Response Guidelines

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  

 

 

 

/Grace Duffin/

Grace Duffin, Esq.

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 05, 2022 for

U.S. Trademark Application Serial No. 90687977

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.