NOTE TO THE FILE
SERIAL NUMBER: 88227657
DATE: 12/20/2019
NAME: achaffin
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 X Left message with
X email Attorney/ApplicantRequested Law Library search 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: Menke, Rebecca <rmenke@nixonpeabody.com>
Sent: Thursday, December 19, 2019 6:05 PM
To: Chaffin, Alexandra <Alexandra.Chaffin@USPTO.GOV>
Cc: Costellia, Jeffrey <JCostellia@nixonpeabody.com>; Arnold, Lauren <larnold@nixonpeabody.com>; NP Trademark Docketing <NPTM@nixonpeabody.com>
Subject: RE: Four Copending Trademark Applications: Serial Numbers 88227657; "SCURALDATA"; 88227660; "Chinese Character Mark" "SONG SHU JI SUAN"; SN 88282561;"VERVERICA"; SN 88226522; "GEZISHAN"
Dear Ms. Chaffin,
We received your voicemail and below email. Thank you for reaching out. Please do issue the Office Actions, and we will respond accordingly to those.
Thank you.
Sincerely,
Rebecca
Rebecca Menke
Attorney at Law
rmenke@nixonpeabody.com
T +1 415-984-8440 | F 844-602-1318
Nixon Peabody LLP | One Embarcadero Center, 32nd Floor | San Francisco, CA 94111 | USA
nixonpeabody.com | @NixonPeabodyLLP
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From: Chaffin, Alexandra <Alexandra.Chaffin@USPTO.GOV>
Sent: Thursday, December 19, 2019 10:37 AM
To: NP Trademark Docketing <NPTM@nixonpeabody.com>
Subject: Four Copending Trademark Applications: Serial Numbers 88227657; "SCURALDATA"; 88227660; "Chinese Character Mark" "SONG SHU JI SUAN"; SN 88282561;"VERVERICA"; SN 88226522; "GEZISHAN"
[EXTERNAL E-MAIL]
Dear Mr. Costellia:
I am writing because three of these four copending applications were pulled back from publication because upon further review, they all require further amendments for two duplicate entries in class 9 that need to be deleted, one clarification in class 9, and two entries in class 42.
Specifically, the following entries require amendments. I would like to fix these via Examiner’s Amendment, so please let me know by the end of today if you approve of these amendments, otherwise I will send additional Office Actions.
1. The following duplicate entries in Class 009 need to be deleted:
“downloadable computer software for use in the field of business for financial management and financial planning; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy;”
2. The following entries in Class 009 and Class 042 require additional clarifying language (suggested additions in bold):
IC 09: “electronic digital signboards”
IC 42: “scientific, technological, research and design services related to telecommunication and navigation signals” is not sufficiently specific. Applicant must indicate the specific scientific and technological services. The following amendments taken from the ID Manual are suggested:
“Scientific and technological services, namely, research and design in the field of computer networking hardware related to telecommunication and navigation signals”.
In addition, the following entry in the second to last line of IC 42 “rental of entertainment software” is not sufficiently specific and could include services in more than one class. See the following examples from the ID Manual: Rental of computer game software in IC 41; Rental of application software in IC 42. The following amendments taken from the ID Manual are suggested:
“rental of application software”.
3. Finally, the fourth copending application listed, SN 88226522; "GEZISHAN", requires all of the identification amendments laid out above and the following additional amendment in IC 36 (suggested changes in bold):
IC 36: “financial information and evaluations”.
Please let me know if you approve of these amendments as soon as possible and if you have any questions. I will also follow up with a call.
Best,
/Alexandra K. Chaffin/
Examining Attorney
Law Office 126
571.270.3077
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