NOTE TO THE FILE
SERIAL NUMBER: 86819975
DATE: 02/24/2016
NAME: jchery1
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
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: laperle@apple.com [mailto:laperle@apple.com]
Sent: Wednesday, February 24, 2016 1:08 AM
To: Chery, Jeffrey <Jeffrey.Chery@USPTO.GOV>
Cc: trademarkdocket@apple.com
Subject: Re: U.S. Patent and Trademark Office Applications - APPLE NEWS (86819744), 86819975 (APPLE NEWS FORMAT), 86819991 (APPLE NEWS PUBLISHER)
Dear Jeffrey,
Thank you for the email below.
We agree to the suggested amendments and the disclaimers. Please proceed on the basis you propose below.
By the way, I also submitted a response to the Office Action for APPLE NEWS in Class 41earlier today (Ser. No. 86819705). In that action I merely amended the Class 41 language to the following:
Providing websites featuring information in the field of entertainment, music, sports, news, and arts and culture
Best regards,
Tom
On Feb 23, 2016, at 11:58 AM, Chery, Jeffrey <Jeffrey.Chery@USPTO.GOV> wrote:
Good afternoon,
I am the examining attorney reviewing U.S. Patent and Trademark Office Applications Serial Nos. 86819744 (APPLE NEWS), 86819975 (APPLE NEWS FORMAT), and 86819991 (APPLE NEWS PUBLISHER). I have identified the following issues that I believe can be resolved via email for each application.
1. 86819744 (APPLE NEWS): The identification of services needs to be amended to clarify the nature of the services. Applicant may adopt the following if applicable:
Class 42: Computer services, namely, providing a user-customized feed of news, sports, weather, commentary, and other information, content from periodicals, blogs, and websites, and other text, audio, video, and multimedia content; providing search engines for obtaining data via the internet and other electronic communications networks; providing online non-downloadable application development software, and technical support and consultation services for developing computer applications
2. 86819975 (APPLE NEWS FORMAT): The word “FORMAT” must also be disclaimed in registering your mark as it is descriptive of the services the applicant offers.
No claim is made to the exclusive right to use “NEWS FORMAT” apart from the mark as shown.
3. 86819991 (APPLE NEWS PUBLISHER):
a. Identification of services: The identification of services needs to be amended to clarify the nature of the services. Applicant may adopt the following if applicable:
Class 42: Providing online non-downloadable software used to create, prepare, format, update, publish, deliver, manage, and promote content for viewing on mobile devices and computers; Technicalsupport and consultation services for developing computer applications and providing computer software information online relating to the creation, preparation, formatting, updating, publication, delivery, management, and promotion of content for viewing on mobile devices and computers; providing online non-downloadable software used in connection with online advertising, advertising campaign management, market research, and monitoring readership, user engagement, advertising exposure, and consumer response; Technical support and consultation services for developing computer applications and providing computer software information online relating to online advertising, advertising campaign management, market research, and monitoring readership, user engagement, advertising exposure, and consumer response
b. Disclaimer of “NEWS PUBLISHER”: The wording “NEWS PUBLISHER” must disclaimed in registering your mark as it is descriptive of the services the applicant offers.
No claim is made to the exclusive right to use “NEWS PUBLISHER” apart from the mark as shown.
These changes can be made on my end through an Examiner’s Amendment once you confirm agreement with the above changes.
Please respond to this email by Wednesday, February 24, 2016.
Regards,
Jeffrey Chery
Trademark Examining Attorney
United States Patent and Trademark Office
Alexandria, VA 22314
Tel: (571) 272-5657