NOTE TO THE FILE
SERIAL NUMBER: 87712233
DATE: 06/20/2019
NAME: kschwarz
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
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
X Changed TRADEUPS to: amend identificationsX OTHER:
From: Syed Abedi [mailto:SyedA@SeedIP.com]
Sent: Wednesday, June 19, 2019 9:31 PM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Subject: RE: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Dear Ms. Schwarz,
Thank you for your e-mail. Please delete electric cooker (striked out below). The other amendments are all acceptable. Thank you for entering these amendments via an Examiner’s Amendment.
Best regards,
Syed
Syed Abedi | Associate
Seed Intellectual Property Law Group LLP
701 Fifth Avenue, Suite 5400, Seattle, WA 98104 USAMain: 206.622.4900 | Direct: 206.694.4851 | Fax: 206.682.6031
Email: SyedA@SeedIP.com | Website: www.SeedIP.com
From: Schwarz, Kathleen [mailto:Kathleen.Schwarz@USPTO.GOV]
Sent: Tuesday, June 18, 2019 5:06 PM
To: Syed Abedi
Subject: RE: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Dear Mr. Abedi:
Thank you again for your patience as I worked through your proposed amendments to the identifications, and I apologize for my delay. I’ve included them below, with some necessary outstanding suggestions bolded and highlighted.
I have incorporated the majority of your proposed additions and deletions from the identifications. As you’ll note, however, I’ve omitted the proposed language “and technical consultation services relating thereto”. As addressed in the December 31, 2018 Office Action, the additional services of technical consulting, whether related to data automation, collection, or acquisition, or to the identified proprietary software, exceed the scope of the original identification and the identification as acceptably amended. Technical consulting services are considered discrete from the functions and purposes of the services listed.
If these amendments are acceptable to the applicant, and with your express authorization and completion of necessary amendments, I would be happy to amend the identifications as follows via Examiner’s Amendment.
If these changes are not acceptable to the applicant, a formal and timely response to the December 31, 2018 Final Office Action will be required to avoid abandonment of the identifications listed therein.
The following language is suggested:
Class 09:
scientific, nautical, surveying, photographic, cinematographic, optical, measuring, signaling, checking, and teaching apparatus and instruments, namely multi-view electronic display boards; apparatus for recording, transmission or reproduction of sound or images; blank recording discs; blank magnetic data carriers; cash registers; calculating machines; fire extinguishing apparatus; data processing apparatus; electronic displays, namely, digital signage; electric and electronic display panels for displaying multiple views; electric warning lights; illuminated exit signs; illuminated evacuation signs; electronic script prompters and cues for use in conjunction with multi-view displays; customized content distribution and delivery systems, namely, multi-view electronic display boards; customized content distribution and delivery systems, namely, computer software and computer hardware for operating of electronic and static display; electric sensors; computer software and hardware for analyzing data from electric sensors and their attendant servers and memory media; electronic systems, namely, computer software and hardware for the input, output, storage, retrieval, communication and display of data and information; electronic systems comprising software and hardware for wayfinding; carrying cases specifically adapted for carrying electronic multi-view display boards and ancillary related components including lights; supporting devices for multi-view electronic display systems, namely, electronic control wands and wearables in the nature of smart watches, smart eyeglasses, activity trackers, video display monitors, computer peripherals in the nature of wireless mice that are adapted to engage with multi-view displays; electric warning light systems; emergency warning lighting; emergency evacuation lighting; navigational safety-warning lights, namely, lights that are specifically adapted to engage with electronic multi-view displays
Class 11:
Airport runway and transportation directional lights; carrying cases specifically adapted for electric lights; lighting installations; lighting installations for use in the field of architectural lighting; decorative lighting in the nature of light bulbs, electric lanterns, lamps, LED lighting fixtures, floodlights, spotlights, chandeliers, wall lights, lanterns, LED light strips, figurines being electrically-luminated; entertainment lighting, namely, stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; light stands for theatrical stage lighting, live music and musical stage lighting, live show stage lighting, film stage lighting; lighting apparatus for sports arenas and theme parks; exit lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; guidance lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; navigational lighting, namely, lamps, light emitting diodes (LEDs), electric luminaires, LED luminaires, luminaire reflectors, luminaire diffusers, luminaire refractors, luminaire diffractors; theatrical lighting, namely, theatrical stage lighting apparatus; thematic lighting, namely stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; apparatuses for lighting, heating, steam generation, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes, namely, lighting installations, heating installation, steam generating installations,
electric _____ {identify product by common commercial or generic name or by product cooked, e.g., slow, egg, rice, etc.} cooker, electromagnetic induction cooker, microwave ovens, refrigerator, freezing device, namely, freezers, dryer for industrial use, namely, dryer for drying paint, dryer for drying coatings, convection dryers being dehumidifers, air dryer for drying clothes, air dryer for drying hands, air dryer for drying hair,
Class 41:
education services, namely, conducting classes, seminars, conferences, and workshops in a live and virtual environment in the field of sports, culture, and personal enrichment; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, multimedia entertainment content, and live visual and audio performances, namely, in the field of sports, culture, and personal enrichment; training services in the field of sports and personal enrichment; cross-cultural training; gambling services;
Class 42:
Scientific and technological services, namely, research and design in the field of computer systems; industrial analysis and research services in the field of fiber optics; design and development of computer hardware and software; data acquisition and collection in the fields of content distribution systems, advertising, captioning, decoration, directions, education, effects, entertainment, gambling, gaming, guiding, illumination, information, marketing, marques, prompting, safety, security, signaling, scoreboards, traffic control, transportation, translations, and wayfinding, namely, data automation and collection service using proprietary software to evaluate, analyze and collect service data
These amendments do not affect the identifications of services in Classes 35, 37, or 38.
Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707. All relevant e-mail communications will be placed in the official application record.
Please feel free to contact me via phone or email should you have any questions or wish to discuss these requirements in more detail.
Best Regards,
Kathleen Schwarz
/Kathleen H. Schwarz/
Trademark Examining Attorney
Law Office 123
U.S. Patent & Trademark Office
Tel: 571-272-2460
From: Syed Abedi [mailto:SyedA@SeedIP.com]
Sent: Thursday, June 06, 2019 4:39 PM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Subject: RE: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Thank you, Ms. Schwarz.
From: Schwarz, Kathleen [mailto:Kathleen.Schwarz@USPTO.GOV]
Sent: Thursday, June 6, 2019 1:38 PM
To: Syed Abedi
Subject: RE: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Dear Mr. Abedi:
Thank you for your patience. I’m still looking through the identification amendments, but should be in touch by COB tomorrow (Friday, June 7) regarding any additional changes.
Best Regards,Kathleen Schwarz
/Kathleen H. Schwarz/
Trademark Examining Attorney
Law Office 123
U.S. Patent & Trademark Office
Tel: 571-272-2460
From: Syed Abedi [mailto:SyedA@SeedIP.com]
Sent: Monday, May 20, 2019 4:07 PM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Subject: RE: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Dear Ms. Schwarz:
I wanted to follow-up to make sure you received my e-mail. Please let me know if there are any questions.
Best regards,
Syed
Syed Abedi | Associate
Seed Intellectual Property Law Group LLP
701 Fifth Avenue, Suite 5400, Seattle, WA 98104 USAMain: 206.622.4900 | Direct: 206.694.4851 | Fax: 206.682.6031
Email: SyedA@SeedIP.com | Website: www.SeedIP.com
From: Syed Abedi
Sent: Thursday, May 2, 2019 12:19 PM
To: 'kathleen.schwarz@uspto.gov'
Subject: Proposed Amendment to Goods/Services | Mark: PARALLEL REALITY | App S/N: 87/712,233
Dear Examining Attorney Schwarz:
Thank you for your time discussing the outstanding Office Action issued in connection with Application S/N: 87/712,233 (mark: PARALLEL REALITY). I have attached a proposed amendment to be entered via an Examiner’s Amendment. As you will note, I have accepted all your proposed amendments, deleted the unclear goods in class 9 and class 41. The only change is highlighted in green, and it relates to a proposal for class 42 services. Class 37 had similar language, namely, technical consultation in the field of content distribution and delivery for advertising, captioning …. If you believe this language cannot be incorporated, please let me know. Thank you!
Best regards,
Syed
Syed Abedi | Associate
Seed Intellectual Property Law Group LLP
701 Fifth Avenue, Suite 5400, Seattle, WA 98104 USAMain: 206.622.4900 | Direct: 206.694.4851 | Fax: 206.682.6031
Email: SyedA@SeedIP.com | Website: www.SeedIP.com