NOTE TO THE FILE
SERIAL NUMBER: 87654500
DATE: 02/09/2018
NAME: ekon
NOTE:
From: Merriam, Cassidy A. [mailto:cmerriam@bhfs.com]
Sent: Thursday, February 08, 2018 9:47 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Ackerman, Daniel I. <dackerman@bhfs.com>; Sullivan, Dawn R. <DSullivan2@BHFS.com>; Cokas, Kristen R. <KCokas@BHFS.com>
Subject: RE: T and TTEC Trademark Applications, #87654500, 87747131 and 87747158
Dear Elissa,
Thank you very much for taking the time to discuss these identifications by phone yesterday and for providing the proposed amendments via email. Our client has confirmed that the revisions are accurate and acceptable. Accordingly, we would appreciate you entering the changes via Examiner’s Amendment. Thanks so much and please let us know if you have any questions or need additional information.
Best regards,
Cassidy
Cassidy A. Merriam*
Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street, Suite 2200
Denver, CO 80202
(303) 223.1248 tel
cmerriam@bhfs.com
*Licensed to practice law in California, New York, and New Jersey, but not currently licensed in Colorado.
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Wednesday, February 07, 2018 2:05 PM
To: Merriam, Cassidy A.
Subject: RE: T and TTEC Trademark Applications, #87654500, 87747131 and 87747158
Dear Cassidy
Per our conversation today, I have listed below the proposed amendments to the description of services. I listed your original ID first in red, and then my proposed changes in black. I have incorporated the changes we discussed, the proposed changes in Mr. Ackerman’s email below and my original suggested changes. Please let me know if these descriptions are acceptable, or whether you/your client require any further changes. Thank you.
Class 35 original: employment and advertising agency services for others and research, development and consulting services related thereto; computer site operation and management services for others and research, development and consulting services related thereto; Customer relationship management services and customer care services
Class 35 proposed: employment and advertising agency services for others and business marketing research, development and consulting services related thereto; business management services, namely, remote and onsite business management of computer sites for others and business research, development and consulting services related thereto; Customer relationship management services and customer care services
Class 36 original – acceptable as filed: financial analysis and consulting services
Class 38 original: telecommunication services
Class 38 proposed: Telecommunications services, namely, providing telephone and electronic mail services, providing multiple-user access to a global computer information network, that also features routing calls for others to customer service representatives
Class 41 original: educational services, training services and seminars; computer disaster recovery planning services and computer site design, operation and management services
Class 41 proposed: educational services, namely, training in the field of job placement, recruiting, staffing and hiring; training in the field of customer care and customer relationship management, particularly training for customer service representatives and for those hiring customer service representatives; educational services, namely, conducting classes, seminars, training sessions and workshops in the fields of effective marketing, consulting, and communications skills
Class 42 original: Software as a service (SAAS) services featuring software for use in the provision of customer care and customer relationship management services; research, development and consulting services related to computer disaster recovery planning services, computer site design services and computer software; computer programming services for others; application service provider services
Class 42 proposed: Software as a service (SAAS) services featuring software for use in the provision of customer care and customer relationship management services; research, development and technological consulting services
related toin the field of computer disaster recovery planning services, computer site design services and computer software; computer programming services for others; application service provider services, namely, hosting computer software applications of others that feature employment job advertising, recruiting, hiring, personnel placement, staffing, job applicant tracking and screening, and outsourcing; computer services, namely, on-site and remote management of information technology (IT) systems of others and technological and research, development and consulting services related thereto; computer disaster recovery planning; and computer site design, and on-site management and operation of information technology (IT) systems of others
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
From: Ackerman, Daniel I. [mailto:dackerman@bhfs.com]
Sent: Wednesday, January 31, 2018 3:04 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>; DN - Trademark Docket <DNTrademarkDocket@BHFS.com>; Merriam, Cassidy A. <cmerriam@bhfs.com>
Subject: RE: T and TTEC Trademark Applications, #87654500, 87747131 and 87747158
Dear Examining Attorney Kon,
We have received information from the client that we hope can address the issues raised. Based on the volume of information, if a phone call would be helpful today, we would be happy to oblige. Here is the information we have received:
For Class 35: Clarification needed
What a “computer site” is. This is meant to reference on-site and remote/cloud as a “computer site.” Should read “remote and on-site management services …”
For Class 38: Additional specifics needed
Draft additional specifications: Telecommunications services, namely, providing telephone and electronic mail services, providing multiple-user access to a global computer information network for managing and accessing customer care and customer relationship management data centers that function as diverse, central demarcation points for both voice and data traffic and support for clients globally including dynamic global routing to a customer service representative queued from centrally- based equipment and using centralized, hosted applications.
For Class 41: Additional specifics needed
Draft additional specifications for the fields of training and seminars. educational services, namely, training in the field of job placement, recruiting, staffing and hiring; training in the field of customer care and customer relationship management, particularly training for customer service representatives and for those hiring customer service representatives; educational services, namely, conducting classes, seminars, training sessions and workshops in the fields of effective marketing, consulting, and communications skills.
For Class 42: Additional specifics needed
Clarification terms and further specify the application service provide services: application service provider (ASP), namely, hosting computer software applications of others that feature employment job advertising, recruiting, hiring, personnel placement, staffing, job applicant tracking and screening, and outsourcing
Please let us know if these additional services descriptions address the issues. Thank you for your time and assistance.
Best regards,
Dan
Daniel I. Ackerman
Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street, Suite 2200
Denver, CO 80202
303.223.1199 tel
dackerman@bhfs.com
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Wednesday, January 31, 2018 7:45 AM
To: DN - Trademark Docket; Ackerman, Daniel I.; Merriam, Cassidy A.
Subject: Re: T and TTEC Trademark Applications, #87654500, 87747131 and 87747158
Re
TTEC design, 87747158, Docket 006574
T design, 87747131, Docket 006574
TTEC, 87654500, Docket 006574
Dear Mr. Ackerman
I am the trademark examining attorney to whom these 3 applications have been assigned. There are minor issues with these applications that we can resolve by examiner’s amendment, based on your reply to this email or a phone call.
The descriptions of services are the same for all three applications. The descriptions require some minor amendments. I have listed my proposed changes below, and highlighted them for your reference. The applicant must provide more specificity in the italicized items.
Class 35: employment and advertising agency services for others and business research, development and consulting services related thereto; computer site operation and management services for others and research, development and consulting services related thereto; Customer relationship management services and customer care services
The underlined wording above is not clear. “Computer services, namely, on-site management of information technology, IT, systems of others, and business research, development and consulting services related thereto” belongs in Class 42. “Business management of (clarify what a “computer site” is) for others and business research, development and consulting services related thereto” would be in Class 35.
Class 36: acceptable as submitted -- financial analysis and consulting services
Class 38: telecommunication services, namely, (specify the services, e.g., telecommunication access services, routing calls to local third-party taxi cab dispatchers in the vicinity of the caller, providing electronic message alerts via the Internet, etc.)
Class 41: educational services, namely, conducting training services and seminars in the fields of (indicate fields of training and seminars, e.g., business management, gourmet cooking, computer disaster recovery and planning); computer disaster recovery planning services and computer site design, operation and management services
The underlined wording above belong in Class 42, not in Class 41. If they are the subject matter of the training and seminars, then you can say “educational services, namely, conducting training and seminars in the fields of computer disaster recovery planning and computer site design, operation and management,” in Class 41. If applicant actually performs those services for others, then amend to “computer disaster recovery planning and computer site design, and on-site management and operation of information technology, IT, systems of others,” and put them into Class 42.
Class 42: Software as a service (SAAS) services featuring software for use in the provision of customer care and customer relationship management services; research, development and technological consulting services
related toin the field of computer disaster recovery planning services, computer site design services and computer software; computer programming services for others; application service provider services, namely, (specify these services, e.g., hosting computer software applications of others, or application service provider services featuring software for use – then specify the software function, e.g., for use in database management)
I would be happy to enter the agreed upon changes for you by examiner’s amendment, send you confirmation of the changes and move the applications forward. Please let me know how you want to proceed or if you have questions. Please also let me know if you prefer that I issue priority Office actions on these.
Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov