NOTE TO THE FILE
SERIAL NUMBER: 79288012
DATE: 12/08/2020
NAME: tmessick
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: Konkel, Laura M (22254) <lmkonkel@michaelbest.com>
Sent: Monday, December 7, 2020 8:19 AM
To: Messick, Tabitha <Tabitha.Messick@USPTO.GOV>
Subject: RE: Regarding your trademarks ESPRESSIF, Serial no. 79287530; and ESP32, ESP8266, Serial nos. 79287685, 79288012
Dear Tabitha,
We accept your proposed changes:
ESPRESSIF
- Class 42: Technical research in the fields of electronic chips, data processing apparatus, computer software, semiconductor devices, printed circuits, computer chips, integrated circuits, computer memory devices, smart cards, and printed circuit boards; research and development of new products for others; computer programming; maintenance of computer software; computer software design; updating of computer software; consultancy in the design and development of computer hardware; computer software consultancy; information technology (IT) consultancy; outsource service providers in the field of information technology
ESP32, ESP8266
- Class 9: Wireless local area network hardware; adapters for wireless network access; measuring apparatus, namely, spectrometers, oscilloscopes, signal integrity network analyzers, and wireless network analyzers
- Class 42: Technical research in the fields of electronic chips, data processing apparatus, computer software, semiconductor devices, printed circuits, computer chips, integrated circuits, computer memory devices, smart cards, and printed circuit boards;
computer software design; updating of computer software; consultancy in the design and development of computer hardware;information technology (IT) consultancy; research and development of new products for others;computer programming; maintenance of computer software; computer software consultancy; outsource service providers in the field of information technology; all of the foregoing excluding computer services related to computer software for use in connection with data processing and data management;all of the foregoing excluding computer software development, computer programming, and maintenance of computer software in the field of energy efficiencynone of the foregoing in connection with energy efficiency programs
Best regards,
Laura
Laura M. Konkel
Partner
T 608.283.2254 | michaelbest.com
Michael Best & Friedrich LLP
From: Messick, Tabitha <Tabitha.Messick@USPTO.GOV>
Sent: Thursday, December 3, 2020 9:10 AM
To: Konkel, Laura M (22254) <lmkonkel@michaelbest.com>
Subject: Regarding your trademarks ESPRESSIF, Serial no. 79287530; and ESP32, ESP8266, Serial nos. 79287685, 79288012
Good morning Laura,
I am the trademark examining attorney reviewing your trademark applications for ESPIRESSIF, Serial no. 79287530; and ESP32, ESP8266, Serial nos. 79287685, 79288012. The Office recently received your response and I wanted to speak with you about several issues. I am hopeful we can resolve things via Examiner’s Amendment and move the marks to publication review.
In regards to ESPRESSIF, in Class 42, we need to further clarify the nature of the “chips” in relation to the technical research services to make clear the nature of those services. Class 9 is acceptable.
- Class 42: Technical research in the fields of electronic chips, data processing apparatus, computer software, semiconductor devices, printed circuits, {further specify type, e.g., computer chips} chips, integrated circuits, computer memory devices, smart cards, and printed circuit boards; research and development of new products for others; computer programming; maintenance of computer software; computer software design; updating of computer software; consultancy in the design and development of computer hardware; computer software consultancy; information technology (IT) consultancy; outsource service providers in the field of information technology
In regards to ESP32 and ESP8266, they have identical issues. With Class 9, we need to further clarify the nature of the “Network analyzers.”
- Class 9: Wireless local area network hardware; adapters for wireless network access; measuring apparatus, namely, spectrometers, oscilloscopes, and {further specify, e.g., signal integrity network analyzers, wireless network analyzers} network analyzers
In regards to the limitation to Class 42 to avoid the Section 2(d) Refusal, I think the limitation is incongruous because it excludes services that are in the actual identification. I would be more amenable to drop the refusal if applicant took those services out of the identification and added a limitation of “none of the foregoing in connection with energy efficiency programs.” Please see my proposal below. (There is also the issue of further clarifying the nature of the “chips.”)
- Class 42: Technical research in the fields of electronic chips, data processing apparatus, computer software, semiconductor devices, printed circuits, {further specify, e.g., computer chips} chips, integrated circuits, computer memory devices, smart cards, and printed circuit boards;
computer software design; updating of computer software; consultancy in the design and development of computer hardware;information technology (IT) consultancy; research and development of new products for others;computer programming; maintenance of computer software; computer software consultancy; outsource service providers in the field of information technology; all of the foregoing excluding computer services related to computer software for use in connection with data processing and data management;all of the foregoing excluding computer software development, computer programming, and maintenance of computer software in the field of energy efficiencynone of the foregoing in connection with energy efficiency programs
Please contact me back at your earliest convenience about these applications and the potential amendments. I look forward to hearing back from you.
Thank you,