NOTE TO THE FILE
SERIAL NUMBER: 88013339
DATE: 08/29/2018
NAME: akeeley
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 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:X OTHER:
From: Hoover, Marsha K. [mailto:Marsha.Hoover@goldbergkohn.com]
Sent: Wednesday, August 29, 2018 4:58 AM
To: Keeley, Alison <Alison.Keeley@USPTO.GOV>
Cc: Trademark Applications <tmapps@goldbergkohn.com>
Subject: Re: Trademark Application Nos. 88013282, 88013339, and 88013264
Dear Ms. Keeley:
I truly appreciate your reaching out to resolve these issues with an Examiner’s Amendment. However, since I am out of the office on vacation, it will likely be most expeditious if you would issue an office action, which will give me a better opportunity to communicate with our client about these issues.
Thank you
Marsha
Marsha K. Hoover | Goldberg Kohn Ltd. | 55 East Monroe, Suite 3300, Chicago, Illinois 60603 | direct: 312.201.3916 | direct fax: 312.863.7416 | Marsha.Hoover@goldbergkohn.com | www.goldbergkohn.com | GK: Celebrating our 40th Anniversary
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On Aug 28, 2018, at 4:33 PM, Keeley, Alison <Alison.Keeley@USPTO.GOV> wrote:This email is intended for Marsha Hoover and/or any other authorized attorney.
Trademark Application Nos. 88013282, 88013339, and 88013264 (Hand Design, You’re in Good Hands, and ALLSTATE), Atty Docket Nos. 7640.594, 7640.596 , and 7640.598
Dear Ms. Hoover,
I am the trademark examiner assigned to these three applications (these are the last of my copending applications). I have reviewed these three applications had have identified a common issue to these three that can be resolved by Examiner’s Amendment.
Specifically for “monitoring the Internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud” in Class 42, the type of monitoring must be specified to clearly identify that this is an electronic or computer based service in Class 42, rather than a physical security service in Class 45 (which most are electronic, it is feasible that you could provide physical security monitoring for a server or similar). Therefore, I would propose adding the wording “electronic” or “Computer-based” to this wording. (This is based on the note in the deleted former Class 45 Identification, that was removed from the manual in January 2017).
The following complete Identification is suggested:
Class 9: Computer application software for accessing cloud-based software for use in managing online accounts, online subscriptions, personal information, and for use in monitoring internet websites and online publications for personal information; computer application software for accessing information obtained from credit report and credit score monitoring, and for providing tips and information concerning cyber threats, identity theft and fraud; computer application software for use in accessing assistance with fraud and identity theft protection services and closing or rehabilitating compromised accounts
Class 42: Software as a service (SaaS) featuring software for use in electronic storage of data; software as a service (SaaS) featuring software to assist in tracking, managing, and reporting, credit scores, and account information; software as a service (SaaS) featuring software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; software as a service (SaaS) featuring software for scanning a user's email to generate a list of the user's online accounts; electronic monitoring of personally identifying information to detect potential identity theft via the internet; computer security services involving the tracking, monitoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting data and information from unauthorized access to prevent data theft, identity theft and fraud; electronic monitoring of credit card activity and providing alerts and notifications concerning possible fraud and identity theft for fraud protection purposes related thereto; electronic and computer-based monitoring of the Internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud
Please let me know by phone or email if this is acceptable, if you would propose different wording, or you would prefer that I send an Office Action.
Thank you,
Alison Keeley
/Alison Keeley/
Trademark Examining Attorney
Law Office 113
(571) 272-4514
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