NOTE TO THE FILE
SERIAL NUMBER: 87580442
DATE: 10/09/2018
NAME: ieulin
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
email Attorney/ApplicantRequested Law Library search 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: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Tuesday, October 09, 2018 3:41 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
Thank you Ingrid – that would be greatly appreciated. Please proceed with the Examiner’s Amendment.
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Tuesday, October 09, 2018 12:40 PM
To: Au-Yeung, Christine
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
This can be corrected by Examiner’s Amendment if you prefer.
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Tuesday, October 09, 2018 3:39 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
That is correct.
We will proceed to enter the amendments.
Thank you very much.
Best,
Christine
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Tuesday, October 09, 2018 12:38 PM
To: Au-Yeung, Christine
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
The revisions for Classes 9 and 42 are ok. Is it also you intentions to delete Classes 35, 36 & 41?
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Tuesday, October 09, 2018 3:27 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
Dear Ingrid:
I look forward to hearing from you.
Best,
Christine
From: Au-Yeung, Christine
Sent: Thursday, September 27, 2018 6:22 PM
To: 'Eulin, Ingrid'
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
Dear Ingrid:
Following up on my email below.
Thank you,
Christine
From: Au-Yeung, Christine
Sent: Tuesday, September 11, 2018 12:07 PM
To: 'Eulin, Ingrid'
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
BLAST (51418-TM1002)
Deadline: October 30, 2018
Dear Ingrid:
Thank you for your email, and apologies for the delayed response.
Since “computer game software” and “providing online non-downloadable game software” are acceptable, would our amendments that further clarify the scope of the gaming software still be an issue?
The function of the software is gaming – users play games and every time they win, for example, a mission in the game, this sets a “trigger” that allows their bank account to move money from their checking to savings account. It is thus a gaming platform that encourages users to save money and improve financial habits through gaming.
Could you please let us know if our amendments below remain unclear?
Thank you very much.
Best,
Christine
Class 9: computer game software; computer game software, namely, game software that allows users to increase personal savings and improve financial habits;
computer software for investment planning; computer investment software for personal savings and habit building; computer software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
Class 35: advertising services
Class 36: investment services; providing information in the field of investment
Class 41: education services, namely, providing educational information in the field of investment
Class 42: providing online non-downloadable game software; providing online non-downloadable game software, namely, providing online non-downloadable game software that allows users to increase personal savings and improve financial habits;
providing online non-downloadable software for investment planning; providing online non-downloadable investment software for personal savings and habit building; providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Wednesday, August 01, 2018 1:31 PM
To: Au-Yeung, Christine
Subject: RE: Request for Examiner's Amendment re Serial No. 87/580,442
Christine,
The language in the amendment is a little unclear. Is this case software or some type of investment software? The language “increase personal savings and improve financial habits” clarifies the goal but not the function of the software. However, an acceptable amendment that clarifies the function to demonstrate the software is unrelated to the registered software would obviate the refusal.
Regards,
/ingrideulin/
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Monday, July 16, 2018 6:49 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: Request for Examiner's Amendment re Serial No. 87/580,442
51418-TM1002
Deadline: October 30, 2018
Dear Ingrid,
Further to my email, could you please advise whether we can enter the following amendments through an Examiner’s Amendment in order to resolve the 2(d) refusal?
Class 9: computer game software; computer game software, namely, game software that allows users to increase personal savings and improve financial habits;
computer software for investment planning; computer investment software for personal savings and habit building; computer software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
Class 35: advertising services
Class 36: investment services; providing information in the field of investment
Class 41: education services, namely, providing educational information in the field of investment
Class 42: providing online non-downloadable game software; providing online non-downloadable game software, namely, providing online non-downloadable game software that allows users to increase personal savings and improve financial habits;
providing online non-downloadable software for investment planning; providing online non-downloadable investment software for personal savings and habit building; providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
We look forward to hearing from you.
Best,
Christine
________________________________
Christine K. Au-Yeung
Associate | Wilson Sonsini Goodrich & Rosati
(415) 947-2023 | cauyeung@wsgr.com
From: Au-Yeung, Christine
Sent: Monday, July 16, 2018 10:48 AM
To: 'Eulin, Ingrid'
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid,
Thank you very much!
Best,
Christine
________________________________
Christine K. Au-Yeung
Associate | Wilson Sonsini Goodrich & Rosati
(415) 947-2023 | cauyeung@wsgr.com
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Monday, July 16, 2018 10:41 AM
To: Au-Yeung, Christine
Subject: RE: Inquiry re Serial No. 87/580,442
Game software is acceptable and the revisions should be acceptable so long as they fall within the scope of what was filed or previously approved.
Regards,
/Ingrideulin/
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Thursday, July 12, 2018 9:13 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid:
Following up on our email below.
Thank you again,
Christine
________________________________
Christine K. Au-Yeung
Associate | Wilson Sonsini Goodrich & Rosati
(415) 947-2023 | cauyeung@wsgr.com
From: Au-Yeung, Christine
Sent: Friday, June 22, 2018 3:50 PM
To: Eulin, Ingrid
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid,
Thank you very much for your response.
The client’s software is more akin to a gaming software that allows users to increase personal savings as opposed to investment software.
Please let us know if the following would suffice to clarify the scope and overcome the cited registration:
Class 9: computer game software; computer game software, namely, game software that allows users to increase personal savings and improve financial habits;
computer software for investment planning; computer investment software for personal savings and habit building; computer software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
Class 42: providing online non-downloadable game software; providing online non-downloadable game software, namely, providing online non-downloadable game software that allows users to increase personal savings and improve financial habits;
providing online non-downloadable software for investment planning; providing online non-downloadable investment software for personal savings and habit building; providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments,none of the aforementioned goods related to the processing of commercial loans
Thank you very much for your assistance.
Best,
Christine
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Friday, June 22, 2018 3:35 PM
To: Au-Yeung, Christine
Subject: RE: Inquiry re Serial No. 87/580,442
This is still not acceptable. How does it do this? You may want to check the manual and register for acceptable language. What is investment software? Does it allow them to make trades?
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Friday, June 22, 2018 6:31 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid,
Thank you for your email.
Our client’s gaming software allows its users to increase personal savings and build money-saving habits by playing games. Please see below for our edits:
Class 9: computer game software;
computer software for investment planning;computer investment software for personal savings and habit building, namely, computer investment software that allows users to increase personal savings and improve financial habits;computer software for tracking the profitability of financial portfolios and processing investments, none of the aforementioned goods related to the processing of commercial loans
Class 42: providing online non-downloadable game software;
providing online non-downloadable software for investment planning;providing online non-downloadable investment software for personal savings and habit building, namely, computer investment software that allows users to increase personal savings and improve financial habits;providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments, none of the aforementioned goods related to the processing of commercial loans
Please let us know if the above amendment sufficiently clarifies the scope of the goods and services and overcomes the citation.
Thank you very much.
Best,
Christine
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Thursday, June 21, 2018 5:01 AM
To: Au-Yeung, Christine
Subject: RE: Inquiry re Serial No. 87/580,442
This is not acceptable because the function is not properly stated. What does the software do?
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Thursday, June 14, 2018 11:48 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid,
Following up on my email below.
Thank you very much.
Best,
Christine
From: Au-Yeung, Christine
Sent: Friday, May 25, 2018 4:05 PM
To: Eulin, Ingrid
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ingrid,
Thank you again for your guidance.
The Applicant is willing to make the following amendments:
Class 9: computer game software;
computer software for investment planning;computer investment software for personal savings and habit building;computer software for tracking the profitability of financial portfolios and processing investments, none of the aforementioned goods related to the processing of commercial loans
Class 42: providing online non-downloadable game software;
providing online non-downloadable software for investment planning;providing online non-downloadable investment software for personal savings and habit building;providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments, none of the aforementioned goods related to the processing of commercial loans
As you can see, the Applicant would include a limitation at the end of the language while leaving software for personal savings and habit building in the descriptions.
Could you please let us know if the above amendments would be sufficient to overcome the citation?
Many thanks,
Christine
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Wednesday, May 16, 2018 11:03 AM
To: Au-Yeung, Christine
Subject: RE: Inquiry re Serial No. 87/580,442
The remaining software products would need to be deleted but you could modify the game software to further clarify that it is not related to processing commercial loans.
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Wednesday, May 16, 2018 1:59 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Inquiry re Serial No. 87/580,442
Dear Ms. Eulin:
Thank you for your response.
Would the proposed alternative be acceptable as well (i.e., not deleting any language from the application but including the following disclaimer: “; none of the aforementioned goods (or services) related to the processing of commercial loans”)?
Best,
Christine
From: Eulin, Ingrid [mailto:Ingrid.Eulin@USPTO.GOV]
Sent: Tuesday, May 15, 2018 6:17 PM
To: Au-Yeung, Christine
Subject: RE: Inquiry re Serial No. 87/580,442
The games do not appear to be related to the registrant’s goods and services and the application would be permitted to move forward with the other language stricken.
Regards,
/ingrdeulin/
From: Au-Yeung, Christine [mailto:cauyeung@wsgr.com]
Sent: Tuesday, May 15, 2018 9:07 PM
To: Eulin, Ingrid <Ingrid.Eulin@USPTO.GOV>
Subject: RE: Inquiry re Serial No. 87/580,442
51418-TM1002
Dear Ms. Eulin:
I am writing to follow up on our email below.
Your guidance would be greatly appreciated.
Thank you very much.
Best,Christine
From: Au-Yeung, Christine
Sent: Thursday, May 03, 2018 12:42 PM
To: 'Eulin, Ingrid'
Subject: Inquiry re Serial No. 87/580,442
51418-TM1002
Dear Ms. Eulin:
I hope this message finds you well.
I write regarding an office action you issued on April 30, 2018 for the mark (Serial No. 87/580,442), in which you raised a 2(d) refusal in Classes 9 and 42.
Could you please let us know if the following amendments to Classes 9 and 42 would resolve the refusal?
Class 9: computer game software;
computer software for investment planning; computer investment software for personal savings and habit building; computer software for tracking the profitability of financial portfolios and processing investments
Class 42: providing online non-downloadable game software;
providing online non-downloadable software for investment planning; providing online non-downloadable investment software for personal savings and habit building; providing online non-downloadable software for tracking the profitability of financial portfolios and processing investments
Alternatively, would the following disclaimer work: “; none of the aforementioned goods (or services) related to the processing of commercial loans”?
We look forward to hearing from you.
Thank you,
Christine
____________________
Christine K. Au-Yeung
Associate | Wilson Sonsini Goodrich & Rosati, P.C.
One Market Plaza, Spear Tower, Suite 3300, San Francisco, CA 94105
(415) 947-2023 | cauyeung@wsgr.com
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