NOTE TO THE FILE
SERIAL NUMBER: 88027363
DATE: 11/01/2018
NAME: cyi1
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 Anthony Rufo, Esq., 11.1.18 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:From: Rufo, Anthony [mailto:Anthony.Rufo@dlapiper.com]
Sent: Wednesday, October 31, 2018 5:02 PM
To: Yi, Crystal <Crystal.Yi@USPTO.GOV>
Cc: Medansky, Keith W. <Keith.Medansky@dlapiper.com>; Nolan, Elizabeth <Elizabeth.Nolan@dlapiper.com>; Trademark Docket Chicago Mailbox <TrademarkDocketChica@dlapiper.com>
Subject: RE: U.S. Trademark Application Serial No. 88027363 (OPTON)
Dear Attorney Yi:
I am Keith’s associate, and he asked that I respond to your below message.
We authorize the amendments to the Class 009 identification in the form that you recommend. We are prepared to have the TEAS signature attended to shortly after the Priority Action issues. Please let us know if you have any questions or require anything further.
Regards,
Anthony
Anthony E. Rufo
Associate
T +1 312.368.2170
F +1 312.251.2170
E anthony.rufo@dlapiper.com
DLA Piper LLP (US)
444 West Lake Street, Suite 900
Chicago, Illinois 60606-0089
United States
www.dlapiper.com
From: Yi, Crystal <Crystal.Yi@USPTO.GOV>
Sent: Wednesday, October 31, 2018 1:35 PM
To: Medansky, Keith W. <Keith.Medansky@dlapiper.com>
Cc: Trademarks - CHI <ch.tm@dlapiper.com>; Nolan, Elizabeth <Elizabeth.Nolan@dlapiper.com>
Subject: U.S. Trademark Application Serial No. 88027363 (OPTON)
Importance: High
[EXTERNAL]
Good afternoon Keith:
I am the examining attorney reviewing U.S. Patent and Trademark Office Application Serial No. 88027363 (OPTON). I have identified the following minor issues that I believe can be informally through a combination Examiner’s Amendment/Priority Action:
1. Identification of goods and services: The identification of goods and services needs to be amended to clarify the nature of the goods and services. Applicant may adopt the following, if accurate:
International Class 009: "Computer software, namely,
andownloadable software application for allowing users to access information regarding automobile insurance; Computer software, namely,andownloadable software application for allowing users to access information regarding insurance; Computer software, namely,andownloadable software application for allowing users to purchase automobile insurance on devices connected to the Internet; Computer software, namely,andownloadable software application for allowing users to purchase insurance on devices connected to the Internet; Downloadable software in the nature of a mobile application for allowing users to access information regarding automobile insurance; Downloadable software in the nature of a mobile application for allowing users to access information regarding insurance; Downloadable software in the nature of a mobile application for allowing users to purchase automobile insurance; Downloadable software in the nature of a mobile application for allowing users to purchase insurance; Downloadable software application for allowing users to access information regarding automobile insurance; Downloadable software application for allowing users to access information regarding insurance; Downloadable software application for allowing users to purchase automobile insurance; Downloadable software application for allowing users to purchase insurance"
International Class 036: "Insurance services, namely, underwriting, issuing, and administration of automobile insurance; Providing information regarding automobile insurance via the internet accessible through a software application; Insurance information; Providing information regarding automobile insurance through social media; Providing information regarding automobile insurance via the Internet; Providing a website featuring information regarding automobile insurance; Providing a website featuring information in the field of insurance to facilitate the purchase of automobile insurance" [no change required]
These changes can be approved and made by Examiner’s Amendment. Once the changes are authorized, I will issue a combination Examiner’s Amendment/Priority Action to address the below signature issue.
2. Application Signature: The application was unsigned, resulting in the application not being properly verified. This issue can be resolved by responding to the Priority Action with an appropriate signed verification statement through the TEAS response form.
These changes to the identification of goods and services can be made on my end through an Examiner’s Amendment once you confirm agreement with the above changes. I will subsequently issue a combination Examiner’s Amendment/Priority Action to which you may respond to address the signature issue.
Please respond to this email by 3 p.m. EST on Thursday, November 1, 2018.
Sincerely,
Crystal H. Yi
Trademark Examining Attorney
Law Office 123
U.S. Patent & Trademark Office
571.270.0763