NOTE TO THE FILE
SERIAL NUMBER: 79214870
DATE: 01/31/2018
NAME: rfairbanks
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: Sarah G. Voeller [mailto:svoeller@hsml.com]
Sent: Tuesday, January 30, 2018 4:56 PM
To: Fairbanks, Ron <Ron.Fairbanks@USPTO.GOV>
Subject: RE: MGSS; Ser. No. 79214870 (Our Ref. No. 08279.1937USIB)
Thank you Mr. Fairbanks.
It appears that a portion of the amended goods was left out. It should read:
Electronic circuits, magnetic disks, magnetic tapes, CD-ROMs, DVD-ROMs and other recording media, recorded with computer programs in the field of
automobiles for repair of automobiles, customer management in the field of automobiles, management of repair parts of automobiles, and providing
manuals for maintenance of automobiles
I trust that this will be acceptable.
Kind regards,
Sarah Voeller
From: Fairbanks, Ron [mailto:Ron.Fairbanks@USPTO.GOV]
Sent: Monday, January 29, 2018 7:55 PM
To: Sarah G. Voeller
Subject: RE: MGSS; Ser. No. 79214870 (Our Ref. No. 08279.1937USIB)
Ms. Voeller,
Hopefully this email finds you doing well.
Thank you for the kind reminder, and please accept my apologies for not responding to your earlier email. Your proposal appears to be acceptable with the exception of the last portion of your #3. Your proposal reads as follows:
Electronic circuits, magnetic disks, magnetic tapes, CD-ROMs, DVD-ROMs and other recording media, recorded with computer programs in the field of automobiles for repair of automobiles, customer management in the field of automobiles, management of repair
The “management of repair” portion appears to be incomplete when compared with your #1 and #2.
Please advise.
Have a good evening.
Sincerely,
Ron
Ronald L. Fairbanks
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 119
(571) 272-9405
From: Sarah G. Voeller [mailto:svoeller@hsml.com]
Sent: Monday, January 29, 2018 3:56 PM
To: Fairbanks, Ron <Ron.Fairbanks@USPTO.GOV>
Cc: Heidi McCarty <hmccarty@hsml.com>; Suzanne Mullen <smullen@hsml.com>
Subject: RE: MGSS; Ser. No. 79214870 (Our Ref. No. 08279.1937USIB)
*Kind reminder*
I would prefer to resolve this, and avoid a final office action.
Thank you,
Sarah Voeller
From: Sarah G. Voeller
Sent: Monday, January 22, 2018 3:11 PM
To: ron.fairbanks@uspto.gov
Cc: Heidi McCarty; Suzanne Mullen
Subject: MGSS; Ser. No. 79214870 (Our Ref. No. 08279.1937USIB)
Dear Mr. Fairbanks,
We have reviewed the office action and reviewed your proposed amendments to the goods with our client. Unfortunately, the applicant cannot agree to your proposed amendment to the goods, since the applicant’s computer software is not in the field of "repair of automobiles" but is instead in the field of "automobiles". Thus, the applicant wishes to amend the goods as listed in the attached chart. If their proposed amendments remain unacceptable to you, please let us know so we can work together to find acceptable language.
Kind regards,
Sarah Voeller