NOTE TO THE FILE
SERIAL NUMBER: 88111132
DATE: 10/12/2020
NAME: knicholson1
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: Allen Danner <adanner@dannerip.com>
Sent: Thursday, October 8, 2020 6:29 PM
To: Nicholson, Kerry <Kerry.Nicholson@USPTO.GOV>
Subject: Serial no.: 88111132 (SKYWEB) Please Proceed with the Changes to the Goods and Services
Dear Examiner Nicholson,
Your proposal was approved, so please go ahead and make the amendment via an Examiner’s Amendment as you suggest. My understanding is that this addresses the specimen refusal. Please let me know if anything further is required by me.
Thank you for your help on this matter.
Allen Danner
Allen D. Danner, Ph.D.
Attorney | Principal
Danner IP Law Firm
1055 West 7th Street, 33rd Floor
Los Angeles, CA 90017
Direct: 213.448.8668
FAX: 626.802.4470
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From: Allen Danner <adanner@dannerip.com>
Sent: Thursday, October 8, 2020 2:47 PM
To: Nicholson, Kerry <Kerry.Nicholson@USPTO.GOV>
Subject: Re: Serial no.: 88111132 (SKYWEB) Proposed Amendments to Goods and Services
Dear Examiner Nicholson,
Thank you for your email message. I have contacted my client and expect to hear back from them shortly.
Thanks.
Allen Danner
From: Nicholson, Kerry <Kerry.Nicholson@USPTO.GOV>
Sent: Wednesday, October 7, 2020 9:59 PM
To: Allen Danner <adanner@dannerip.com>
Subject: RE: Serial no.: 88111132 (SKYWEB) Proposed Amendments to Goods and Services
Dear Mr. Danner,
I apologize for the delayed response. I think the following would be acceptable:
· Class 42: Providing online non-downloadable computer application software for automating management of residential and commercial buildings, displaying current weather conditions, and controlling environmental systems, namely, HVAC, thermostats, ventilation and dehumidifying devices, heating, and lighting, for mobile phones and computers connected to the internet
If you’d like to amend the ID to my suggestion to obviate the specimen refusal, please let me know and I’ll make the amendment via an Examiner’s Amendment.
Best,
Kerry A. Nicholson
Trademark Examining Attorney
Law Office 120
United States Patent & Trademark Office
(571) 272-5159
From: Allen Danner <adanner@dannerip.com>
Sent: Thursday, October 1, 2020 5:32 PM
To: Nicholson, Kerry <Kerry.Nicholson@USPTO.GOV>
Subject: Serial no.: 88111132 (SKYWEB) Proposed Amendments to Goods and Services
U.S. Application Serial No. 88111132
Mark: SKYWEB
Docket: VEN1.TM.032
RE: Final Office Action Issued May 4, 2020
Dear Examiner Nicholson,
Thank you for your call on May 4, 2020 regarding the Final Office Action dated May 4, 2020 for the above referenced mark. During that call you suggested amending the Goods and Services to overcome the rejection. You also mentioned that there is no need for a declaration for the amended Goods and Services. I am following up with you so that I can do what is necessary for the reply to the final office action to be accepted.
As suggested, the amended Goods and Services will recite:
Non-downloadable computer
Computerapplication software for mobile phones and computers connected to the internet, namely, software for use with controlling environmental systems such as HVAC, thermostats, ventilation and dehumidifying devices, heating, lighting, automated management of residential and commercial buildings and display of current weather conditions;Downloadable software in the nature of a mobile application for use with controlling environmental systems such as HVAC, thermostats, ventilation and dehumidifying devices, heating, lighting, automated management of residential and commercial buildings and display of current weather conditions
I plan to respond to the final office action by making the change to the Goods and Services as suggested. Please let me know if the Goods and Services as amended would make the specimens which were submitted on April 9, 2020 acceptable, and would therefore overcome the rejection in the final office action.
Please let me know if you have requirements beyond amending the Goods and Services in order to overcome the issues listed in the final office action.
Thank you again for your kind help with this matter.
Allen Danner
Allen D. Danner, Ph.D.
Attorney | Principal
Danner IP Law Firm
1055 West 7th Street, 33rd Floor
Los Angeles, CA 90017
Direct: 213.448.8668
FAX: 626.802.4470