Notation to File

WINDOWS

Microsoft Corporation

RE: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11 Dear Gilbert, Thank you for your email. I believe we are almost there. Please see my comments on the proposed amendments: “internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content;” – Approved. “providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of Internet and cellular telephone transmission;” – This amendment was not referenced in the Office Action dated May 10, 2018, and I do not believe we had discussed it by phone. In view of Term ID nos. 038-185, 038-609, and 038-390, among numerous trademark registrations, I respectfully request that the application proceed without this amendment. “providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs by means of Internet and cellular telephone transmission;” – Approved. “communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users;” – Approved. “computer services, namely remote hosting of operating systems of others; computer services, namely remote hosting of computer applications of others;” – My understanding from our call was that we could proceed with “computer services, namely remote hosting of operating systems for others.” The rest of the language above is acceptable, but please let us know if we can proceed with changing “for others” to “of others” in the first term. “providing hosted operating systems through the internet; providing hosted computer applications of others through the internet;” – Approved. “constructing in the nature of designing and developing a computer platform on the internet for electronic commerce for others;” – Approved. If the amendments as revised above are acceptable, please proceed by Examiner’s Amendment. I will be happy to discuss by phone if helpful. Sincerely, John John Halski | Perkins Coie LLP COUNSEL 1201 Third Avenue Suite 4900 Seattle, WA 98101-3099 D. +1.206.359.3881 F. +1.206.359.4881 E. JHalski@perkinscoie.com From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Friday, May 18, 2018 5:10 PM To: Halski, John P. (SEA) <JHalski@perkinscoie.com> Cc: Stanton, Grace Han (SEA) <GStanton@perkinscoie.com>; Stewart, Sheila (SEA) <SStewart@perkinscoie.com>; Watt, Rebecca F. (SEA) <RWatt@perkinscoie.com> Subject: RE: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11 Hello Mr. Halski: Thank you for your email. I’ve taken a look at your proposed language vis-à-vis my notes from our conversation earlier this week. I have amended your proposed changes per my notes. For example, you provided alternative and acceptable language, e.g. “communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users” to clarify that the service involved users. Class 038: Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of Internet and cellular telephone transmission; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs by means of Internet and cellular telephone transmission; communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users; information, advisory and consultancy services relating to all the aforesaid Class 041: [accepted as amended] Class 042: Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and development of computer hardware and software; computer services, namely remote hosting of operating systems of others; computer services, namely remote hosting of computer applications of others; providing hosted operating systems through the internet; providing hosted computer applications of others through the internet; rental of computing and data storage facilities of variable capacity; providing, developing and designing on-line non-downloadable software accessible over a global computer network for managing computer applications; constructing in the nature of designing and developing a computer platform on the internet for electronic commerce for others; managing and monitoring the websites of others that feature online discussion forums; designing and developing electronically stored web pages for online services on the internet; data warehousing; elaboration and maintenance of web sites for third parties; managing web sites for others; rental of web servers; web site maintenance, creation and hosting services for others; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage, shared computing capacity scaling, messaging services and calculation of website ranking based on user traffic If the above language is accurate, please let me know, and I will issue the examiner’s amendment. I will be away from the office next week, but will be on the lookout for your email, so we can move forward with registration. Best regards, Gilbert PS: Thank you for using the courtesy title of “Examining Attorney”. I understand that there is a tradition on the patent side of the house to use the title “Examiner”; however, “Gilbert” is fine. Best, Gilbert Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028 From: Halski, John P. (Perkins Coie) [mailto:JHalski@perkinscoie.com] Sent: Wednesday, May 16, 2018 7:04 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: Stanton, Grace Han (Perkins Coie) <GStanton@perkinscoie.com>; Stewart, Sheila (Perkins Coie) <SStewart@perkinscoie.com>; Watt, Rebecca F. (Perkins Coie) <RWatt@perkinscoie.com> Subject: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11 Dear Examining Attorney Swift, Thank you for reaching out and for your time on this matter. Following up on our last call, I am hoping that we can avoid the need to amend “communication by computer;” in Class 38 by noting the following applications filed since 2015 that have been approved for publication by the USPTO with identical (or nearly identical) language: ser. nos. 87381828, 86799051, 86863679 and 86756842. (The language sometimes appears as “communications by computer.”) As to the remaining amendments that you have requested, our client proposes the following: Class 38: Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of internet and cellular telephone transmission; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs; communication by computer; information, advisory and consultancy services relating to all the aforesaid Class 42: Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and developm

NOTE TO THE FILE

SERIAL NUMBER: 87473722

DATE:    05/30/2018

NAME: gswift

NOTE:

From: Halski, John P. (Perkins Coie) [mailto:JHalski@perkinscoie.com]
Sent: Wednesday, May 23, 2018 12:32 AM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Cc: Stanton, Grace Han (Perkins Coie) <GStanton@perkinscoie.com>; Stewart, Sheila (Perkins Coie) <SStewart@perkinscoie.com>; Watt, Rebecca F. (Perkins Coie) <RWatt@perkinscoie.com>
Subject: RE: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11

Dear Gilbert,

Thank you for your email. I believe we are almost there. Please see my comments on the proposed amendments:

“internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content;” – Approved.

“providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of Internet and cellular telephone transmission;” – This amendment was not referenced in the Office Action dated May 10, 2018, and I do not believe we had discussed it by phone. In view of Term ID nos. 038-185, 038-609, and 038-390, among numerous trademark registrations, I respectfully request that the application proceed without this amendment.

“providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs by means of Internet and cellular telephone transmission;” – Approved.

“communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users;” – Approved.

“computer services, namely remote hosting of operating systems of others; computer services, namely remote hosting of computer applications of others;” – My understanding from our call was that we could proceed with “computer services, namely remote hosting of operating systems for others.” The rest of the language above is acceptable, but please let us know if we can proceed with changing “for others” to “of others” in the first term.

“providing hosted operating systems through the internet; providing hosted computer applications of others through the internet;” – Approved.

“constructing in the nature of designing and developing a computer platform on the internet for electronic commerce for others;” – Approved.

If the amendments as revised above are acceptable, please proceed by Examiner’s Amendment. I will be happy to discuss by phone if helpful.

Sincerely,

John

John Halski | Perkins Coie LLP

COUNSEL

1201 Third Avenue Suite 4900

Seattle, WA 98101-3099

D. +1.206.359.3881

F. +1.206.359.4881

E. JHalski@perkinscoie.com

From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Friday, May 18, 2018 5:10 PM
To: Halski, John P. (SEA) <JHalski@perkinscoie.com>
Cc: Stanton, Grace Han (SEA) <GStanton@perkinscoie.com>; Stewart, Sheila (SEA) <SStewart@perkinscoie.com>; Watt, Rebecca F. (SEA) <RWatt@perkinscoie.com>
Subject: RE: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11

Hello Mr. Halski:

Thank you for your email. I’ve taken a look at your proposed language vis-à-vis my notes from our conversation earlier this week. I have amended your proposed changes per my notes. For example, you provided alternative and acceptable language, e.g. “communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users” to clarify that the service involved users.

Class 038:            Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of Internet and cellular telephone transmission; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs by means of Internet and cellular telephone transmission; communication by computer, namely, electronic transmission of data, sounds, images and documents among computer users; information, advisory and consultancy services relating to all the aforesaid

Class 041:            [accepted as amended]

Class 042:            Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and development of computer hardware and software; computer services, namely remote hosting of operating systems of others; computer services, namely remote hosting of computer applications of others; providing hosted operating systems through the internet; providing hosted computer applications of others through the internet; rental of computing and data storage facilities of variable capacity; providing, developing and designing on-line non-downloadable software accessible over a global computer network for managing computer applications; constructing in the nature of designing and developing a computer platform on the internet for electronic commerce for others; managing and monitoring the websites of others that feature online discussion forums; designing and developing electronically stored web pages for online services on the internet; data warehousing; elaboration and maintenance of web sites for third parties; managing web sites for others; rental of web servers; web site maintenance, creation and hosting services for others; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage, shared computing capacity scaling, messaging services and calculation of website ranking based on user traffic

If the above language is accurate, please let me know, and I will issue the examiner’s amendment.

I will be away from the office next week, but will be on the lookout for your email, so we can move forward with registration.

Best regards,

Gilbert

PS: Thank you for using the courtesy title of “Examining Attorney”. I understand that there is a tradition on the patent side of the house to use the title “Examiner”; however, “Gilbert” is fine.   Best, Gilbert

Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028

From: Halski, John P. (Perkins Coie) [mailto:JHalski@perkinscoie.com]
Sent: Wednesday, May 16, 2018 7:04 PM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Cc: Stanton, Grace Han (Perkins Coie) <GStanton@perkinscoie.com>; Stewart, Sheila (Perkins Coie) <SStewart@perkinscoie.com>; Watt, Rebecca F. (Perkins Coie) <RWatt@perkinscoie.com>
Subject: U.S. Trademark Application No. 87473722 (WINDOWS) - 41827-4193.US11

Dear Examining Attorney Swift,

Thank you for reaching out and for your time on this matter. Following up on our last call, I am hoping that we can avoid the need to amend “communication by computer;” in Class 38 by noting the following applications filed since 2015 that have been approved for publication by the USPTO with identical (or nearly identical) language: ser. nos. 87381828, 86799051, 86863679 and 86756842. (The language sometimes appears as “communications by computer.”)

As to the remaining amendments that you have requested, our client proposes the following:

Class 38: Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; internet and cellular telephone transmission broadcasting and electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television by means of internet and cellular telephone transmission; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs; communication by computer; information, advisory and consultancy services relating to all the aforesaid

Class 42: Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and development of computer hardware and software; computer services, namely remote hosting of operating systems ~~and computer applications~~ for others; computer services, namely remote hosting of computer applications of others; providing hosted operating systems ~~and computer applications~~ through the internet; providing hosted computer applications of others through the internet; rental of computing and data storage facilities of variable capacity; providing, developing and designing on-line non-downloadable software accessible over a global computer network for managing computer applications; constructing in the nature of designing and ~~building~~ developing a computer platform on the internet for electronic commerce for others; managing and monitoring the websites of others that feature online discussion forums; designing and developing electronically stored web pages for online services on the internet; data warehousing; elaboration and maintenance of web sites for third parties; managing web sites for others; rental of web servers; web site maintenance, creation and hosting services for others; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage, shared computing capacity scaling, messaging services and calculation of website ranking based on user traffic

If acceptable, we ask that you please submit these changes by Examiner’s Amendment.

Please do not hesitate to call me back if there is anything that we will still need to address prior to publication. We greatly appreciate your assistance.

Sincerely,

John

John Halski | Perkins Coie LLP

COUNSEL

1201 Third Avenue Suite 4900

Seattle, WA 98101-3099

D. +1.206.359.3881

F. +1.206.359.4881

E. JHalski@perkinscoie.com

NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.

NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.