Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88046678

DATE:                                11/08/2018

NAME:                               mhowell1

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

Dear Mr. Howell,

 

The amendments you suggest below are expressly authorized and are acceptable on our end.

 

Thank you for your assistance in this matter.

 

If we need to speak on the phone, please let me know.

 

Best,

Yael Spiewak

 

 

Yael Spiewak | Bio t 973.639.8258 | f 973.679.7389 YSpiewak@ebglaw.com One Gateway Center | Newark, NJ  07102 t 973.642.1900 | www.ebglaw.com Think Green. Please consider the environment before you print this message. Thank you.

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From: Howell, Matthew <Matthew.Howell@USPTO.GOV>
Sent: Thursday, November 8, 2018 9:21 AM
To: Yael Spiewak <YSpiewak@ebglaw.com>
Cc: James P. Flynn <JFlynn@ebglaw.com>; Owen G. Wallace <OWallace@ebglaw.com>
Subject: U.S. Trademark Application Serial No. 88046678 -- Dental Software, Reimagined. -- Docket No. 087614-00002

 

Dear Yael Spiewak,

 

As I indicated in my voicemail, I am the USPTO Examiner reviewing the above-referenced application. 

 

I have completed the search of the Office Records.  However, I am unable to approve this application for the reason explained below.  Nevertheless, I believe this issue may be resolved informally.  If appropriate and with your express authorization, I can amend the application and issue an Examiner’s Amendment. 

 

Please respond as soon as is convenient, but not later than noon (EST) on November 13, 2018.

 

Identification of Goods and Services

 

Applicant must amend the identification because it is indefinite and too broad.  Specifically, the wording “computer software and application accessible on computers, the cloud, smart phones, tablets, and other handheld devices” in Class 9 may include non-downloadable software in Class 42, so the language must be clarified.  Also, “business management services, namely, dental practice management” in Class 35 is unclear whether this is a service offered for the benefit of others as defined in TMEP §1301.01(a)(ii).

 

Applicant might consider amending to the following with suggested additions in bold:

 

Class 9:     Downloadable computer software and computer application software accessible on computers, the cloud, smart phones, tablets, and other handheld devices, for dental practice management including storing, managing, and organizing, business data, patient information, patient records, billing records, schedules, calendars and other information associated with dental practice management

 

Class 35:     Business management services, namely, dental practice management for others, including storing, managing, and organizing, business data, patient information, patient records, billing records, schedules, calendars and other information associated with dental practice management

 

If the above is acceptable and with your express authorization (e.g., return email, telephone call), I can amend the application, as noted above, and issue an Examiner’s Amendment.

 

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.

 

If you have any questions, please do not hesitate to contact me.

 

Thank you.

 

 

Matthew Howell

Examining Attorney

Trademark Law Office 123

(571)270-0992

matthew.howell@uspto.gov