NOTE TO THE FILE
SERIAL NUMBER: 87647475
DATE: 01/26/2018
NAME: echang2
NOTE:
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/Applicant
From: Chang, Betty
Sent: Friday, January 26, 2018 7:20 AM
To: 'Hakim, Sana' <sana.hakim@klgates.com>
Cc: CI Trademarks <citrademarks@klgates.com>
Subject: RE: U.S. Trademark Application Serial No. 87647475 for the mark "STRATUS"; Your Docket No. 3715335-41
Thank you, Sana. I will issue an examiner’s amendment using my proposed edits.
Have a good weekend.
Betty Chang
US Patent & Trademark Office
Examining Attorney
Law Office 115
571-272-6517
From: Hakim, Sana [mailto:sana.hakim@klgates.com]
Sent: Thursday, January 25, 2018 6:05 PM
To: Chang, Betty <Betty.Chang@USPTO.GOV>
Cc: CI Trademarks <citrademarks@klgates.com>
Subject: RE: U.S. Trademark Application Serial No. 87647475 for the mark "STRATUS"; Your Docket No. 3715335-41
Betty,
Thank you again for your email. The proposed underlined amendments are acceptable. I am also confirming that the wording for “paperless delivery signature capture” and “warranty claims calculations” is intended and that “warehouse distribution” is part of the automotive aftermarket industries. Please let me know if this is sufficient to issue an Examiner’s Amendment.
Thank you,
Sana
Sana Hakim
K&L Gates LLP
70 West Madison Street, Suite 3200
Chicago, Illinois 60602
Phone: 312.807.4350
Fax: 312.827.8091
sana.hakim@klgates.com
www.klgates.com
From: Chang, Betty [mailto:Betty.Chang@USPTO.GOV]
Sent: Wednesday, January 24, 2018 5:44 PM
To: Hakim, Sana
Cc: CI Trademarks
Subject: U.S. Trademark Application Serial No. 87647475 for the mark "STRATUS"; Your Docket No. 3715335-41
Dear Sana:
I think it has been awhile since I’ve worked on an examiner’s amendment with you; I hope you are well.
This application should be in condition to proceed subject to clarification of the identification of goods. I have pasted the identification below, with a separation where the semicolon in the ID appears.
Computer software for use in the automotive aftermarket industries for management of parts inventory, procurement, inventory and supply distribution and replenishment, parts pricing, barcode scanning, sales order entry, processing purchase orders, paperless delivery signature capture and warranty claims calculations, accounts payable, accounts receivable and for facilitating electronic communication of the same and for use in warehouse distribution for management of inventory, procurement, inventory and supply distribution and replenishment, pricing, barcode scanning, sales order entry, purchase orders, paperless delivery signature capture, accounts payable, accounts receivable and for facilitating electronic communication of the same and instructional user guides sold as a unit;
Downloadable computer software for use in the automotive aftermarket industries for management of parts inventory, procurement, inventory and supply distribution and replenishment, parts pricing, barcode scanning, sales order entry, processing purchase orders, paperless delivery signature capture and warranty claims calculations, accounts payable, accounts receivable and for facilitating electronic communication of the same and for use in warehouse distribution for management of inventory, procurement, inventory and supply distribution and replenishment, pricing, barcode scanning, sales order entry, purchase orders, paperless delivery signature capture, accounts payable, accounts receivable and for facilitating electronic communication of the same and electronic downloadable instruction manuals provided as a unit therewith
The underscored wordings are my suggested additions to clarify the software functions. Will you kindly confirm whether these suggestions are acceptable and accurate?
I highlighted “and” between “paperless delivery signature capture” and “warranty claims calculations” because I am not familiar with an obvious connection between “paperless delivery signature capture” and any type of warranty calculation. Will you please either confirm that this wording is as intended and accurate or let me know of a proper amendment?
I also highlighted “and for use in warehouse distribution for” because its placement seems to indicate a field of use, similar to the indications of “the automotive aftermarket industries”; however, “warehouse distribution” does not seem to be an industry and, I am not clear on whether it is a part of the automotive aftermarket industries use described earlier in the ID. If this wording identifies a second field of use, would “; and computer software for use in warehouse distribution for...” (and corresponding wording for “downloadable computer software”) be an accurate and acceptable amendment?
If we can work out an acceptable identification, I can enter it by examiner’s amendment. But I can only keep this file in my docket for a week; so, if you will need more time, please let me know and I can issue a priority action to which you will have six months to respond.
Regards,
Betty Chang
US Patent & Trademark Office
Examining Attorney
Law Office 115
571-272-6517
This electronic message contains information from the law firm of K&L Gates LLP. The contents may be privileged and confidential and are intended for the use of the intended addressee(s) only. If you are not an intended addressee, note that any disclosure, copying, distribution, or use of the contents of this message is prohibited. If you have received this e-mail in error, please contact me at sana.hakim@klgates.com.-4