NOTE TO THE FILE
SERIAL NUMBER: 86919261
DATE: 08/09/2017
NAME: djohnson2
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: Friscia, Michael [mailto:MFriscia@McCarter.com]
Sent: Wednesday, August 09, 2017 12:41 PM
To: Johnson, Don <Don.Johnson@USPTO.GOV>
Cc: Garrone, Kelly J. <KGarrone@McCarter.com>; Knoll, Kimberly <KKnoll@McCarter.com>
Subject: RE: Fwd: U.S. Service Mark Application Nos. 86873935, 86919261, 86919485 - GEOMNI, GEOMNI, & Design
Dear Mr. Johnson,
We agree with your requests. Please proceed with an Examiner’s Amendment. Thank you.
Michael Friscia
Begin forwarded message:From: "Johnson, Don" <Don.Johnson@USPTO.GOV>
Date: July 24, 2017 at 9:08:14 PM GMT+2
To: "mfriscia@mccarter.com" <mfriscia@mccarter.com>
Cc: "kknoll@mccarter.com" <kknoll@mccarter.com>
Subject: U.S. Service Mark Application Nos. 86873935, 86919261, 86919485 - GEOMNI, GEOMNI, & DesignMr. Friscia,
Your Docket No. 097171-00012
I am the examining attorney for the above-referenced service mark application. I reviewed applicant’s response to Office action dated July 19, 2017. I write informally to notify you that the identification of services requires several amendments. The word “imagery” should be changed to “images” throughout the identification of services.
In Class 42, the following entry largely duplicates the first entry in Class 37: “obtaining information and images, and providing information, images, and analysis, relating to building structures, roofs, other features of building structures, property, terrain, other objects and conditions, weather, natural hazards, climate, and natural disasters, for use in building inspections, risk assessment, hazard assessment, and reconstruction assessment, and to assist in insurance claims management and analysis.”
Such duplication cannot be correct because the provision of information is classified according to subject matter. The ID Manual, unfortunately, does not include an exhaustive list of subject matters; so line drawing is not always clear.
I suggest the entry in Class 42 be amended as follows: “obtaining information and images, and providing information, images, and analysis, relating to weather, natural hazards, climate, and natural disasters, for use in building inspections, risk assessment, hazard assessment, and reconstruction assessment, and to assist in insurance claims management and analysis.”
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
With your approval, I can enter the amendments into the record via an examiner's amendment.
You may contact me by reply email. If I do not receive a response by Monday, July 31, 2017, I will follow-up with an Office action.
Thank you in advance for your attention to this issue.
Donald Johnson
Examining Attorney
Law Office 104
571-272-7831