NOTE TO THE FILE
SERIAL NUMBER: 88104117
DATE: 05/16/2019
NAME: dvandenabeelen
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:
From: Van Den Abeelen, Derek
Sent: Thursday, May 16, 2019 4:06 PM
To: Pink, Scott W. <spink@omm.com>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Great, I’ll enter the examiner’s amendment.
Best,
Derek
/Derek van den Abeelen/
Trademark Examining AttorneyLaw Office 126
United States Patent & Trademark Office571-270-3997
From: Pink, Scott W. [mailto:spink@omm.com]
Sent: Wednesday, May 15, 2019 7:09 PM
To: Van Den Abeelen, Derek <Derek.VanDenAbeelen@USPTO.GOV>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Dear Derek,
The applicant agrees to the changes below.
Very truly yours,
Scott Pink
O: +1-650-473-2629
M: +1-916-838-1128
From: Van Den Abeelen, Derek <Derek.VanDenAbeelen@USPTO.GOV>
Sent: Wednesday, May 15, 2019 12:52 PM
To: Pink, Scott W. <spink@omm.com>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Hi Scott,
Just wanted to check in on this. Please let me know if the applicant agrees to the changes below.
Thanks,
Derek
From: Van Den Abeelen, Derek
Sent: Friday, May 10, 2019 5:04 PM
To: Pink, Scott W. <spink@omm.com>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Hi Scott,
I realized there is one part of the identification that still causes an issue. In “Consulting services in the area of development, and creation, production, distribution, and post-production of software for video games and amusement rides”, consulting is classified in the class of the subject matter. Specifically, “production” and “post-production” of software for video games and amusement rides would be Class 41 services, thus consulting services for those would be in Class 41. Furthermore, “distribution” of software could be Class 39 or Class 41 services, depending on the nature of the distribution, thus consulting for such distribution would be Class 39 or 41. Therefore, if applicant would still like to retain only Class 42 services, I recommend the following amendment:
Design and development of computer and video games and computer and video game engines; design and development of virtual reality and augmented reality games and software; computer programming services, namely, software development for amusement rides and location based amusement rides and experiences in the nature of theme park rides and virtual and augmented reality experiences; computer software development in the field of mobile applications; innovation consulting services, namely, advising others in the areas of software development for computer programs, video games and amusement rides; Consulting services in the area of development, and creation
, production, distribution, and post-productionof software for video games and amusement rides; designing and modifying computer programs and video games for others; concept design services for retail and restaurant premises, namely interior design services for designing and virtual reality software for creating the look, feel, and guest experience; design and development of animation and special effects for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others for use in retail, restaurant, film, and video game design; art as a service in the nature of concept art design for others, namely graphics arts design for use with digital media
Please let me know if applicant agrees to the amended language. If you have any questions, feel free to give me a call at my number below.
Thanks,
Derek
/Derek van den Abeelen/
Trademark Examining AttorneyLaw Office 126
United States Patent & Trademark Office571-270-3997
Please be aware that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Van Den Abeelen, Derek
Sent: Wednesday, May 08, 2019 4:12 PM
To: Pink, Scott W. <spink@omm.com>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Hi Scott,
The amendments look acceptable. I’ll issue the examiner’s amendment and move the application towards publication.
Thanks,
Derek
From: Pink, Scott W. [mailto:spink@omm.com]
Sent: Wednesday, May 08, 2019 4:09 PM
To: Van Den Abeelen, Derek <Derek.VanDenAbeelen@USPTO.GOV>; IP Calendar Dept <IPCalendarDept@omm.com>
Cc: Agueda, Lisa T. <lagueda@omm.com>; SVIPDocket <SVIPDocket@omm.com>; Cabagnot, Rick <rcabagnot@omm.com>
Subject: RE: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Derek,
We have discussed this with our client and they accept your proposed changes. For the concept design services, they provide both virtual reality software as well interior design services. Therefore, they would like to amend the Cass 42 services as follows:
Design and development of computer and video games and computer and video game engines; design and development of virtual reality and augmented reality games and software; computer programming services, namely, software development for amusement rides and location based amusement rides and experiences in the nature of theme park rides and virtual and augmented reality experiences; computer software development in the field of mobile applications; innovation consulting services, namely, advising others in the areas of software development for computer programs, video games and amusement rides; Consulting services in the area of development, creation, production, distribution, and post-production of software for video games and amusement rides; designing and modifying computer programs and video games for others; concept design services for retail and restaurant premises, namely interior design services for designing and virtual reality software for creating the look, feel, and guest experience; design and development of animation and special effects for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others for use in retail, restaurant, film, and video game design; art as a service in the nature of concept art design for others, namely graphics arts design for use with digital media
Please let me know if these proposed amendments are acceptable.
Very truly yours,
Scott Pink
O: +1-650-473-2629
M: +1-916-838-1128
From: Van Den Abeelen, Derek <Derek.VanDenAbeelen@USPTO.GOV>
Sent: Monday, May 6, 2019 5:20 AM
To: IP Calendar Dept <IPCalendarDept@omm.com>; Pink, Scott W. <spink@omm.com>
Cc: svip@omm.com; aechery@omm.com; Reynolds, Farrah <freynolds@omm.com>
Subject: Amendment to Trademark Application for ADVENTURE WORKS, #88104117
Hi Scott,
Just following up on our previous conversation about a week ago regarding amending U.S. Trademark Application Serial No. 88104117. Please let me know if the applicant had agreed to any of the suggested changes to the identification of services. As a reminder, we discussed the amendments as follows, with the highlighted portion requiring more specificity as being a technical class 42 service, e.g., “concept design services for retail and restaurant premises, namely, designing virtual reality software for creating the look, feel, and guest experience” or “concept design services for retail and restaurant premises, namely, interior design services for designing the look, feel, and guest experience”
Design and development of computer and video games and computer and video game engines; design and development of virtual reality and augmented reality games and software; computer programming services, namely, software development for amusement rides and location based amusement rides and experiences in the nature of theme park rides and virtual and augmented reality experiences; computer software development in the field of mobile applications; innovation consulting services, namely, advising others in the areas of software development for computer programs, video games and amusement rides; Consulting services in the area of development, creation, production, distribution, and post-production of software for video games and amusement rides; designing and modifying computer programs and video games for others; concept design services for retail and restaurant premises, namely designing the look, feel, and guest experience; design and development of animation and special effects for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others; art as a service in the nature of concept art design for others, namely, graphic arts design for others for use in retail, restaurant, film, and video game design; art as a service in the nature of concept art design for others, namely graphics arts design for use with digital media
Feel free to email me or call me with your suggested amendments. Please contact me be Thursday, May 9th in order to avoid the need for a formal Office action.
Thank you,
/Derek van den Abeelen/
Trademark Examining AttorneyLaw Office 126
United States Patent & Trademark Office571-270-3997