NOTE TO THE FILE
SERIAL NUMBER: 87923767
DATE: 12/13/2018
NAME: jmalashevich
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
Changed TRADEUPS to:Dear Mr. Malashevich,
I have now received confirmation from the Applicant that the amendments you propose are acceptable. Please proceed with the Examiner’s amendment for both applications.
Best regards,
Chelseaa, Attorney for Applicant
Chelseaa Bush
+1 650-815-2635 | direct
cbush@sheppardmullin.com | Bio
SheppardMullin
379 Lytton Avenue
Palo Alto, CA 94301-1479
+1 650-815-2600 | main
www.sheppardmullin.com | LinkedIn | Twitter
From: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Sent: Tuesday, November 20, 2018 6:56 AM
To: Chelseaa Bush <CBush@sheppardmullin.com>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: RE: Examiner's Amendment for SN 87923767 (OI <stylized>) and 87923643 O Design
Dear Ms. Bush:
With some small tweaks to ensure that the amendment falls within the scope of the ID’s current wording, the amendment you propose would be acceptable. Tweaked language is indicated in red.
If that clarification is fine with the applicant, then I will be happy to enter the changes via examiner’s amendment.
Class 9àSoftware for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
Computer services, namely, electronically gathering, analyzing, and formatting personal and private identity data and personal and private data relating to user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; software as a service services (SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
Thank you.
Sincerely,
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597
From: Malashevich, Jason
Sent: Wednesday, November 14, 2018 4:54 PM
To: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Subject: FW: Examiner's Amendment for SN 87923767 (OI <stylized>) and 87923643 O Design
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597
From: Chelseaa Bush [mailto:CBush@sheppardmullin.com]
Sent: Monday, November 12, 2018 2:21 PM
To: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: FW: Examiner's Amendment for SN 87923767 (OI <stylized>) and 87923643 O Design
Dear Mr. Malashevich,
Apologies for the delay but we were waiting for instructions from the client. The client would like to amend the goods and services as shown below. Please let us know if the amendments are acceptable and sufficient to avoid the potential conflict you mention.
Class 9 Software for personal and private identity data management and data management of user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking user behavior on websites and mobile applications.
Class 42 Computer services, namely, electronically gathering, analyzing, and formatting personal and private identity data and data regarding user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; software as a service services (SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking data regarding user behavior on websites and mobile applications
In addition, the letters “OI” have no meaning other than trademark significance.
Please be advised that we authorize the same amendment of goods and services for Application Serial No. 87923643. If possible, please enter these amendments by Examiner’s Amendment. If we need to file a formal response, please let us know.
Kind regards,
Chelseaa Bush, Attorney of Record, CA bar member
Chelseaa Bush
+1 650-815-2635 | direct
cbush@sheppardmullin.com | Bio
SheppardMullin
379 Lytton Avenue
Palo Alto, CA 94301-1479
+1 650-815-2600 | main
www.sheppardmullin.com | LinkedIn | Twitter
From: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Sent: Thursday, September 13, 2018 7:05 AM
To: Hal Milstein <HMilstein@sheppardmullin.com>
Cc: svtmdocketing <svtmdocketing@sheppardmullin.com>
Subject: RE: Examiner's Amendment for SN 87923767 (OI <stylized>)
Dear Mr. Milstein:
I wanted to follow up on my e-mail this past Tuesday, as I need to act on this file soon. Please respond at your earliest convenience or, if you believe that you will not be able to obtain consent from the applicant today, request a priority office action.
Thank you.
Sincerely,
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597
From: Malashevich, Jason
Sent: Tuesday, September 11, 2018 1:31 PM
To: 'hmilstein@sheppardmullin.com' <hmilstein@sheppardmullin.com>
Cc: 'svtmdocketing@sheppardmullin.com' <svtmdocketing@sheppardmullin.com>
Subject: Examiner's Amendment for SN 87923767 (OI <stylized>)
Dear Mr. Milstein:
Certain software functions in the identification of goods and services are vague, and there is a potential conflict with a registration that includes the wording “computer application software for storing, managing, processing, browsing and transmitting image data.”
To resolve both issues and enable the application to proceed to publication, the Office suggests the following amendment:
Class 9à Software for personal and private identity data management; computer software for personal and private identity data management on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites
Class 42à Computer services, namely, electronically gathering, analyzing, and formatting personal and private identity data to allow users to manage that data on computer and telecommunications networks; software as a service services (SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users’ email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites
In addition, the following statement would need to be added to the record:
The letters “OI” have no meaning other than trademark significance.
Please let me know, at your earliest convenience, whether Applicant is willing to agree to the above or if you have any questions. The Office is also willing to consider modifications of the above. However, merely excluding “image data” will not be sufficient to obviate the potential conflict.
Thank you.
Sincerely,
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597
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