NOTE TO THE FILE
SERIAL NUMBER: 87527613
DATE: 10/12/2017
NAME: jbaker
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
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:Dear Mr. Baker –
Thank you for your message. The preliminary amendment relates to a correctable error described in TMEP 1201.02(c):
(1) Trade Name Set Forth as Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant’s correct legal name is permitted. Cf. In re Atl. Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats 1990) (finding that Post Registration staff erred in refusing to allow amendment of affidavit under 15 U.S.C. §1058 to show registrant’s corporate name rather than registrant’s trade name).
In this case, the application was erroneously filed in the “name” of Kernel, LLC, which is the applicant’s d/b/a and therefore not a legal entity. The amendment was made to “state the applicant’s correct legal name,” namely Hi LLC. Please let us know if you need any further information or if you would like us to take any further action(s) to perfect the change in name as permitted by the TMEP.
Kind regards,
Tom
Tom Hadid
Cooley LLP
1333 Second Street, Suite 400
Santa Monica, CA 90401-4100
+1 310 883 6448 office
+1 310 883 6500 fax
+1 408 307 5713 mobile
From: Baker, Jordan [mailto:jordan.baker@USPTO.GOV]
Sent: Thursday, October 12, 2017 4:19 AM
To: Hadid, Thomas <thadid@cooley.com>
Subject: RE: U.S. Trademark App. No. 87527613 - KERNEL - Preliminary Amendment filed - question
Dear Mr. Hadid,
As I was looking over the KERNEL application record this morning, I now see a Preliminary Amendment that was not in the record (at least visible to me) yesterday. The ownership change in the Preliminary Amendment would only be acceptable with the filing of an assignment before the PTO, or the submission of some other kind of documentation showing transfer of title to the new owner.
If this is not readily resolvable, I can issue an Examiner’s Amendment/Priority Action, entering the ID changes and then issuing the ownership refusal as the priority action component.
Please let me know how you wish to proceed.
Kind regards,
Jordan A. Baker
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 124
571-272-8844
From: Hadid, Thomas [mailto:thadid@cooley.com]
Sent: Wednesday, October 11, 2017 7:09 PM
To: Baker, Jordan <jordan.baker@USPTO.GOV>
Cc: Cullum, Janet <jcullum@cooley.com>; Yu, Eunice <eyu@cooley.com>; Altieri, Lucy <ALTIERIL@cooley.com>
Subject: RE: U.S. Trademark App. No. 87527613 - KERNEL
Dear Mr. Baker –
Thank you for your message to my colleague, Janet Cullum. We have reviewed your proposed amendments to the KERNEL application’s recitation and agree with your suggestions, including specifically the suggested purpose of “neurophysiology assessment” in International Class 10. We would appreciate entry of these changes via Examiner’s Amendment. Thank you again for your help.
Kind regards,
Tom
Tom Hadid
Cooley LLP
1333 Second Street, Suite 400
Santa Monica, CA 90401-4100
+1 310 883 6448 office
+1 310 883 6500 fax
+1 408 307 5713 mobile
From: Baker, Jordan [mailto:jordan.baker@USPTO.GOV]
Sent: Wednesday, October 11, 2017 3:32 PM
To: Cullum, Janet <jcullum@cooley.com>
Subject: U.S. Trademark App. No. 87527613 - KERNEL
Dear Ms. Cullum,
I am the trademark examining attorney assigned to review the new application for KERNEL. Among the four classes of goods and services, I believe a slight amendment is required for certain goods in Class 9, including reclassification into Class 10. Specifically, applicant’s implantable hardware and circuits appear to be goods in Class 10 since the primary purpose of the goods is medical in nature. I have noted where below where I believe the changes are needed and have made suggestions. I hope we can resolve this by Examiner’s Amendment.
Class 9: Computer hardware, namely, microchips for controlling and enhancing human brain functionality
Class 10: Medical devices for use in treating or diagnosing neurological conditions; Medical devices, namely, implantable neuroprosthetics; Neurophysiological implants made from artificial materials; Medical devices and implants, namely, neurophysiology instruments used for recording and processing signals from human and animal nervous systems, electrophysiology equipment used for recording and processing electrical signals from human and animal subjects and neuroprosthetic devices designed to interface to human and animal nervous systems to restore lost function; [moved from Class 9 -- implantable circuits featuring artificial intelligence technology for {goods appear to be medical in nature, which requires further specification of purpose to classification, e.g., neurophysiology assessment}; implantable computer hardware, namely, microchips for managing and treating neurodegenerative disease and dysfunction]
Please let me know how you wish to proceed and if you would prefer an Office Action.
Kind regards,
Jordan A. Baker
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 124
571-272-8844