NOTE TO THE FILE
Sent to TICRS as Serial Number: 88225556SERIAL NUMBER: 88225559
DATE: 03/15/2019
NAME: nkenealy
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: Anderson, Britt (Perkins Coie)
[mailto:BAnderson@perkinscoie.com]
Sent: Friday, March 15, 2019 12:57 PM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Cc: dockettrademark@PerkinsCoie.com; USPTO Filing Receipts Mailbox <USPTOFilingReceiptsMailbox@perkinscoie.com>; Campos, Kimberly (Perkins Coie) <KCampos@perkinscoie.com>
Subject: RE: Trademark Application Serial No. 88225559 and 88225556 (LEVEL) – Possible Examiner’s Amendments
Thank you for your voicemail and email below. Your amendment in Class 42 is acceptable.
Regarding Class 9, your proposed specifications are also acceptable. For clarity, I provide the full amended description as we understand would be acceptable below:
Electronically operated mechanisms for operating levers, knobs, switches, buttons and handles of electronic door locksets, latches, and deadbolts; electronically operated lock mechanisms; electronically operated entry door locks; electronic locks; electronic access control devices, namely, access control and alarm monitoring systems; software for use with the foregoing for monitoring and operating locks, levers, knobs, switches, buttons and handles of electronically operated lock mechanisms and access control devices for residential and commercial doors and windows; computer hardware for use with electronically operated locks and access control devices; downloadable computer application software for mobile devices, including smart phones, tablets, and wireless telephones, permitting users to monitor electronically operated lock mechanisms and control access and physical security for residential and commercial doors and windows
Britt Anderson | Perkins Coie LLP
PARTNER
D. +1.650.838.4835
From: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Sent: Friday, March 15, 2019 8:06 AM
To: Anderson, Britt (PAO) <BAnderson@perkinscoie.com>; *USPTO
Filing Receipts <USPTOFilingReceipts@perkinscoie.com>
Subject: Trademark Application Serial No. 88225559 and 88225556 (LEVEL) – Possible Examiner’s Amendments
Importance: High
Dear Mr. Anderson,
I am the assigned trademark examining attorney for the above-referenced applications. As I mentioned in my voicemail, some of the wording in the identification of services Class 42 requires clarification. With Serial No. 88225559, in Class 42, the wording “providing a website notifying individuals of a changed status or condition of a sensing device in a security system via electronic message alerts” is indefinite because services of providing a website are classified based on the subject matter of the website and it is not clear if this website is providing security information in Class 45 or if the website is providing technology that notifies individuals in Class 42. I suggest amending this clause to read: “providing a website featuring technology that notifies individuals of a changed status or condition of a sensing device in a security system via electronic message alerts.”
With respect to Serial No. 88225556, in Class 9, the wording “computer hardware” is very broad. There are a couple other registrations in Class 9 that pertain to specific computer hardware that I will need to cite unless we can amend this wording to be more limited in scope, e.g., Registration No. 5566313, 5520040 and 4886113. Additionally, the wording “electronic locks and access control devices” is indefinite because “access control devices” is unclear and potentially overly broad. I suggest amending the wording in Class 9 as follows:
Class 9: Electronically operated mechanisms for operating levers, knobs, switches, buttons and handles of electronic door locksets, latches, and deadbolts; electronically operated lock mechanisms; electronically operated entry door locks; electronic locks; electronic access control devices, namely, {applicant must specify the specific nature of these goods, e.g., access control and alarm monitoring systems}; software for use with the foregoing for monitoring and operating locks, levers, knobs, switches, buttons and handles of electronically operated lock mechanisms and access control devices for residential and commercial doors and windows; computer hardware for use with electronically operated locks and access control devices; downloadable computer application software for mobile devices, including smart phones, tablets, and wireless telephones, permitting users to monitor electronically operated lock mechanisms and control access and physical security for residential and commercial doors and windows
Please let me know by phone or email if I may correct the above through an examiner's amendment or if you would like to discuss these issues. If I do not hear from you by COB today, I will simply send an Office action to address these issues tomorrow.
Kind Regards,
Natalie L. Kenealy
Trademark Examining Attorney
Law Office 104
571-272-7817
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