NOTE TO THE FILE
SERIAL NUMBER: 79252284
DATE: 06/20/2019
NAME: asteel1
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 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: Matthew Frisbee [mailto:frisbee@leasonellis.com]
Sent: Thursday, June 20, 2019 10:20 AM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: Trademark application for "Honor" (SN 79252284) (LE Ref. 04737/308364-US4)
Dear Alyssa,
Huawei has authorized the amendment you suggested, as noted below. Please let me know if you see any discrepancies that need to be addressed.
Class 9
Computer mouse; smart rings; mouse pads; data processing apparatus in the form of buttons with the functions of remote controlling of mobile phones; electrical plugs, sockets and other electric connectors; smartwatches; protective cases for tablet computers; protective covers for tablet computers; adapter cables for headphones; secure digital memory cards; electronic chips for the manufacture of integrated circuits; keyboards with short range radio technology; Global Positioning System (GPS) navigation devices; holders specially adapted for mobile phones for use in vehicles; telephone sets with screens and keyboards; telecommunication transmitters; computer hardware and downloadable software used therewith
and devicefor locating an electronic device by means of communication with a cloud server; electronic navigational instruments; cases for mobile phones; covers specially designed for mobile phones; automatic switching apparatus for telecommunication; electrical switching devices for telecommunication; single channel radio communication apparatus for fixed broadcasting stations; Wide Area Network (WAN) routers; navigation radios; aviation radio communication machines and devices; radios for air traffic control; network routers; external modems;network routers;radio transmitting apparatus; transmitters and receivers for radios; wireless telephones; transmitting and receiving apparatus for radio broadcast; aerials for radios; repeaters for radio and television stations; transceivers for radios; radio beacon machines and devices; radio signal tuners; wireless transmitters and receivers; wireless routers; sound transmitting and receiving apparatus for remote transmission; portable multi-media players; Ultra High-Definition (UHD) televisions; plasma televisions; digital video recorders; camcorders; stereos for vehicles; receivers of video signals; digital audio processors being signal processors for audio speakers; set-top boxes; image intensifiers; webcams; headphones for use with computers; rearview cameras for vehicles; cable television receivers; simulators for the steering and control of vehicles; computerized engine analyzers for vehicles; automatic indicators of low pressure in tires; electric battery detectors in the nature of battery testers; atmospheric air quality and oxygen monitors; gas testing instruments; flue gas analysis apparatus; remote control apparatus and remote presence management products, namely, alarms, sensors and consoles sold as the housing therefor; structured semi-conductor wafers; circuit boards; power connectors; power adapters; electronic circuit boards; computer chips with multi-processors; microchips; mobile electrical sockets; Liquid Crystal Display (LCD) panels; eyeglasses for sports; spectacles used in theatres; Universal Serial Bus (USB) charging hubs; electric battery charging devices; mobile phone charging devices for vehicles; wireless chargers; electric battery chargers for mobile phones; rechargeable batteries; protective covers for mobile telephones; computer network hubs; computer network switches; computer network bridges; demodulators; internal modems; short range radios; Voice Over Internet Protocol (VOIP) phones; cassette players for vehicles; televisions for land vehicles; video recorders for vehicles; electronic book readers; television receivers, namely, televisions; earphones for mobile phones; wireless earphones for smartphones; microphones; video monitors; wireless cellular phone headsets; earphones; headphones; hands-free devices for mobile phones; flight simulators; plug connectors; touch screens; electronic integrated circuits; integrated circuit modules; computer chips; integrated circuit chips; change-over plugs, namely, electrical plugs; plug adaptors; electric batteries for mobile phones; fingerprint identifiers, namely, fingerprint scanners; human face recognition devices, namely, iris recognition security devices; scales with body mass analyzers; baby scales; bathroom scales; subwoofers; audio mixers; needles for surveying compasses; pressure indicators; thermo-hygrometers; safety restraints, other than for vehicle seats and sports equipment and not for medical use; respiratory masks, other than for artificial respiration and not for medical purposes; electronic access control systems for interlocking doors; smartphones wearable on the fingers; scales; noxious gas testing instruments; smartphones wearable on the wrists; temperature indicators; apparatus for testing vehicle transmissions; apparatus for testing vehicle brakes; electronic apparatus and instruments for controlling, adjusting, and testing of drives and motors; protective cases for mobile phones; protective covers for mobile phones; headphones with short range radio technology; battery chargers for mobile phones; battery chargers for tablet computers; sound alarms; audio speakers with short range radio technology; holders specially adapted for use with mobile phones; external antenna; aerials; electric batteries; air analysis apparatus; electrical adapters; solar panels for the production of electricity; mobile power source, namely, rechargeable batteries; cellular phones; mobile phones; electronic tags for goods; joysticks for use with computers, other than for video games; smartglasses;smartwatches; protective films adapted for computer screens; holograms being electronic machines used to apply holographic overlay and to set up and control holograms and verification thereof; wearable activity trackers; covers for smartphones; cases for smartphones; protective films adapted for smartphones; selfie sticks, namely, hand-held monopods
Class 35
Provision of an on-line marketplace for buyers and sellers of goods and services; Outsource service provider in the field of business administration and management for companies
Best regards,
/Matthew L. Frisbee/
Attorney for Applicant
Matthew L. Frisbee
Associate
LEASON ELLIS.
One Barker Avenue, 5th Floor
White Plains, NY 10601
t. 914.821.3090
f. 914.288.0023
Please visit www.leasonellis.com. This e-mail, including any attached files, may contain information that is privileged, confidential or otherwise exempt from disclosure and is solely for the intended recipient(s). Persons other than the intended recipient are prohibited from disclosing, distributing, copying or otherwise using this e-mail. If you received this e-mail in error, please notify the sender or call Leason Ellis’ main number 914.288.0022 and delete it from your computer(s). Thank you.
From: Matthew Frisbee
Sent: Friday, June 14, 2019 9:05 AM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: Trademark application for "Honor" (SN 79252284)
Alyssa,
Thank you for the clarification. I will confer with the client and get back to you shortly.
Best regards,
Matt
Matthew L. Frisbee
Associate
LEASON ELLIS.
One Barker Avenue, 5th Floor
White Plains, NY 10601
t. 914.821.3090
f. 914.288.0023
Please visit www.leasonellis.com. This e-mail, including any attached files, may contain information that is privileged, confidential or otherwise exempt from disclosure and is solely for the intended recipient(s). Persons other than the intended recipient are prohibited from disclosing, distributing, copying or otherwise using this e-mail. If you received this e-mail in error, please notify the sender or call Leason Ellis’ main number 914.288.0022 and delete it from your computer(s). Thank you.
From: Steel, Alyssa [mailto:Alyssa.Steel@USPTO.GOV]
Sent: Friday, June 14, 2019 5:56 AM
To: Matthew Frisbee <frisbee@leasonellis.com>
Subject: RE: Trademark application for "Honor" (SN 79252284)
Dear Matt,
Thank you for your email. I apologize about the typo. The Class 38 services in the application are acceptable as amended. The services below should have been in Class 35, and you will see that I corrected it now. The main issue there is that the term “outsourced” is not acceptable because it is unclear if the applicant is arranging for the outsourcing through contracts with others, or if the applicant is actually providing the business admin & management services. For further explanation, the note in the USPTO ID Manual says: “Outsourcing services involve arranging of service contracts or procurement of goods for others. Outsource service provider activities are classified according to nature/purpose of the outsourced service being rendered, see Outsource service provider in the field of {indicate service, e.g., food preparation, medical billing, IT consulting, etc.}”
For the Class 9 wording in your question, that amendment would work, but for clarification, it is better if it is reversed, so that it does not seem like the hardware is downloadable. I would suggest: computer hardware and downloadable software used therewith for locating an electronic device…”
I hope that helps. Please let me know if you have any other questions. I can hold on to the application until EOB on Thursday, June 20, 2019. If I need to issue an Office Action on Friday, June 21st, please feel free to contact me during the 6 month response period for an Examiner’s Amendment. Thank you for your cooperation.
Best regards,Alyssa
/Alyssa Paladino Steel/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 124
(571) 272-8808
Please note: Relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-709.05.
From: Matthew Frisbee [mailto:frisbee@leasonellis.com]
Sent: Thursday, June 13, 2019 4:35 PM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: Trademark application for "Honor" (SN 79252284)
Dear Alyssa,
Thank you for your e-mail. It appears that the suggested Class 38 language does not relate to this application. Can you please confirm? Also please let me know if “downloadable software and computer hardware for locating an electronic device . . .” would be acceptable. If so, I will write the client to confirm that it would be accurate.
Best regards,
Matt
Matthew L. Frisbee
Associate
LEASON ELLIS.
One Barker Avenue, 5th Floor
White Plains, NY 10601
t. 914.821.3090
f. 914.288.0023
Please visit www.leasonellis.com. This e-mail, including any attached files, may contain information that is privileged, confidential or otherwise exempt from disclosure and is solely for the intended recipient(s). Persons other than the intended recipient are prohibited from disclosing, distributing, copying or otherwise using this e-mail. If you received this e-mail in error, please notify the sender or call Leason Ellis’ main number 914.288.0022 and delete it from your computer(s). Thank you.
From: Steel, Alyssa [mailto:Alyssa.Steel@USPTO.GOV]
Sent: Thursday, June 13, 2019 2:56 PM
To: Matthew Frisbee <frisbee@leasonellis.com>
Subject: Trademark application for "Honor" (SN 79252284)
Dear Mr. Frisbee,
I am writing regarding the trademark application for "Honor" (SN 79252284). Thank you for filing the response on May 31, 2019. These are a few items in the Identification of Goods & Services that still need clarification. With your authorization, I would like to amend the ID as shown in bold type below. Please note that two items require clarification, and two are crossed out for being duplicates. Please let me know if I may enter these changes for you with an Examiner’s Amendment.
Class 9
Computer mouse; smart rings; mouse pads; data processing apparatus in the form of buttons with the functions of remote controlling of mobile phones; electrical plugs, sockets and other electric connectors; smartwatches; protective cases for tablet computers; protective covers for tablet computers; adapter cables for headphones; secure digital memory cards; electronic chips for the manufacture of integrated circuits; keyboards with short range radio technology; Global Positioning System (GPS) navigation devices; holders specially adapted for mobile phones for use in vehicles; telephone sets with screens and keyboards; telecommunication transmitters; {specify downloadable or recorded} software and {specify type or nature of device, e.g. electronic fob-like device} for locating an electronic device by means of communication with a cloud server; electronic navigational instruments; cases for mobile phones; covers specially designed for mobile phones; automatic switching apparatus for telecommunication; electrical switching devices for telecommunication; single channel radio communication apparatus for fixed broadcasting stations; Wide Area Network (WAN) routers; navigation radios; aviation radio communication machines and devices; radios for air traffic control; network routers; external modems;
network routers;radio transmitting apparatus; transmitters and receivers for radios; wireless telephones; transmitting and receiving apparatus for radio broadcast; aerials for radios; repeaters for radio and television stations; transceivers for radios; radio beacon machines and devices; radio signal tuners; wireless transmitters and receivers; wireless routers; sound transmitting and receiving apparatus for remote transmission; portable multi-media players; Ultra High-Definition (UHD) televisions; plasma televisions; digital video recorders; camcorders; stereos for vehicles; receivers of video signals; digital audio processors being signal processors for audio speakers; set-top boxes; image intensifiers; webcams; headphones for use with computers; rearview cameras for vehicles; cable television receivers; simulators for the steering and control of vehicles; computerized engine analyzers for vehicles; automatic indicators of low pressure in tires; electric battery detectors in the nature of battery testers; atmospheric air quality and oxygen monitors; gas testing instruments; flue gas analysis apparatus; remote control apparatus and remote presence management products, namely, alarms, sensors and consoles sold as the housing therefor; structured semi-conductor wafers; circuit boards; power connectors; power adapters; electronic circuit boards; computer chips with multi-processors; microchips; mobile electrical sockets; Liquid Crystal Display (LCD) panels; eyeglasses for sports; spectacles used in theatres; Universal Serial Bus (USB) charging hubs; electric battery charging devices; mobile phone charging devices for vehicles; wireless chargers; electric battery chargers for mobile phones; rechargeable batteries; protective covers for mobile telephones; computer network hubs; computer network switches; computer network bridges; demodulators; internal modems; short range radios; Voice Over Internet Protocol (VOIP) phones; cassette players for vehicles; televisions for land vehicles; video recorders for vehicles; electronic book readers; television receivers, namely, televisions; earphones for mobile phones; wireless earphones for smartphones; microphones; video monitors; wireless cellular phone headsets; earphones; headphones; hands-free devices for mobile phones; flight simulators; plug connectors; touch screens; electronic integrated circuits; integrated circuit modules; computer chips; integrated circuit chips; change-over plugs, namely, electrical plugs; plug adaptors; electric batteries for mobile phones; fingerprint identifiers, namely, fingerprint scanners; human face recognition devices, namely, iris recognition security devices; scales with body mass analyzers; baby scales; bathroom scales; subwoofers; audio mixers; needles for surveying compasses; pressure indicators; thermo-hygrometers; safety restraints, other than for vehicle seats and sports equipment and not for medical use; respiratory masks, other than for artificial respiration and not for medical purposes; electronic access control systems for interlocking doors; smartphones wearable on the fingers; scales; noxious gas testing instruments; smartphones wearable on the wrists; temperature indicators; apparatus for testing vehicle transmissions; apparatus for testing vehicle brakes; electronic apparatus and instruments for controlling, adjusting, and testing of drives and motors; protective cases for mobile phones; protective covers for mobile phones; headphones with short range radio technology; battery chargers for mobile phones; battery chargers for tablet computers; sound alarms; audio speakers with short range radio technology; holders specially adapted for use with mobile phones; external antenna; aerials; electric batteries; air analysis apparatus; electrical adapters; solar panels for the production of electricity; mobile power source, namely, rechargeable batteries; cellular phones; mobile phones; electronic tags for goods; joysticks for use with computers, other than for video games; smartglasses;smartwatches; protective films adapted for computer screens; holograms being electronic machines used to apply holographic overlay and to set up and control holograms and verification thereof; wearable activity trackers; covers for smartphones; cases for smartphones; protective films adapted for smartphones; selfie sticks, namely, hand-held monopods
Class 35
Provision of an on-line marketplace for buyers and sellers of goods and services; Outsource service provider in the field of business administration and management for companies
If you have any questions, please let me know. Thank you for your cooperation.
Best regards,
Alyssa
/Alyssa Paladino Steel/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 124
(571) 272-8808
Please note: Relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-709.05.
Disclaimer
The information contained in this communication from Leason Ellis is confidential. It is intended solely for use by the recipient and others authorized to receive it. If you are not the recipient, you are hereby notified that any disclosure, copying, distribution or taking action in relation of the contents of this information is strictly prohibited and may be unlawful.
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Disclaimer
The information contained in this communication from Leason Ellis is confidential. It is intended solely for use by the recipient and others authorized to receive it. If you are not the recipient, you are hereby notified that any disclosure, copying, distribution or taking action in relation of the contents of this information is strictly prohibited and may be unlawful.
This email has been scanned for viruses and malware, and may have been automatically archived by Leason Ellis. To find out more Click Here.