NOTE TO THE FILE
SERIAL NUMBER: 88231754
DATE: 10/21/2019
NAME: rnkojo
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:Dear Ms. Nkojo,
Thank you for your email, and your very prompt response to our client’s Response to Office Action. We are now in receipt of our client’s instructions.
By Examiner’s amendment, our client wishes to adopt the following services description:
International Class 40: Providing an Internet website portal featuring information in the field of algorithm derived oil and gas production flow of oil and gas wells
Thank you again,
Lisa D. Statt Foy
Authorized Canadian Attorney/Agent
Lisa Statt Foy
Lawyer, Trademark Agent
This message (including any attachments) is for the addressee(s) only and may contain information that is privileged, confidential or exempt from disclosure. If you have received this message in error please immediately notify the sender and delete this email message and any attachments.
"Field Law," the logo and “Because Clarity Matters” are registered trademarks of Field LLP. "Field Law" is a registered trade name of Field LLP.
From: Nkojo, Rhoda [mailto:Rhoda.Nkojo@USPTO.GOV]
Sent: Sunday, October 20, 2019 8:07 AM
To: Saul Abrams
Cc: Lisa Statt Foy
Subject: U.S. Trademark Application Serial No. 88231754
Dear Mr. Abrams:
This message concerns the above-referenced Trademark Application for the mark “WATCHDOG”, Serial No, 88231754.
I am in receipt of your Response to Office Action communication for the above-referenced trademark application. Applicant’s amendments to the identification obviate the Section 2(d) refusal set forth in the previous Office action. However, one minor issue remains with respect to the identification services that we can resolve by Examiner’s Amendment and then, depending upon your amendments, I may be able to approve the mark for publication right away. If you would like to discuss the below, I am available to do so tomorrow between 12:00pm and 5pm EST.
REQUIREMENT – AMEND IDENTIFICATION AND/OR CLASSIFICATION OF SERVICES
For the reasons set forth below, specific wording in the identification of services is unacceptable as indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Applicant’s use of the wording “providing an Internet website portal which performs algorithm derived oil and gas production flow information for oil and gas wells” must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, use of the wording “which performs” renders it unclear whether applicant’s website simply offers or features information or if applicant’s website features technology that enables access to or use of specific information. As a result, applicant’s identification is broad enough to encompass providing information concerning oil and gas production flow classified in International Class 40, and providing a website featuring technology that enables use of or access to oil and gas production flow information classified in International class 42. For information services in the nature of an Internet website portal that features subject matter-specific information, classification depends on the subject matter of the information. Oil and gas production services and thus oil and gas production-related information services are classified in International Class 40. However, if applicant’s services feature technology that enables access to specific information, then such services would be classified in International Class 42, regardless of subject matter. Therefore, for proper classification, applicant must amend the identification to clarify the nature of the services and their subject matter.
If accurate, applicant may adopt any or all of the following identifications with suggested language specified in bold:
International Class 40: Providing an Internet website portal featuring information in the field of algorithm derived oil and gas production flow of oil and gas wells;
International Class 42 Providing an Internet website portal featuring technology that enables users to access and use information concerning algorithm derived oil and gas production flow of oil and gas wells;
Scope Advisory
Applicant should note that it may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
RESPONSE GUIDELINES
If any of the above-referenced amended identifications of services are acceptable to you, I can make the changes myself with an “Examiner’s Amendment”. I would simply need approval by email or telephone at the number below, from you, the authorized attorney of record for the applicant, Advanced Flow Technologies, Inc.
Applicant should be aware that if applicant adds an additional class to the application, applicant will be required to pay the additional fee for any added classes. In such case, I will be required to issue an “Examiner’s Amendment/Priority Action” wherein the Examiner’s Amendment portion of the letter would reflect the agreed changes to the identification in the application record and the Priority Action portion of the letter would reflect the requirement to pay additional fees for any added International Classes.
If, you would like to discuss further, to expedite processing, we can schedule a phone call tomorrow, October 21, 2019, between 12:00pm and 5pm EST, to hopefully resolve the issue. You may also respond to this email with your approval or concerns regarding the above-referenced changes to the application record. I would like to discuss resolution of this issue by close of business Tuesday, October 22, 2019. However if you are unavailable prior to close of business October 22nd, then I can issue a Final Action to you and you will have 6 months to respond.
Thank you for your time,
Rhoda
Rhoda Nkojo
Trademark Attorney - Law Office 117
United States Patent & Trademark Office
(PH): (571) 272-8468
Email: rhoda.nkojo@uspto.gov
Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. 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 Sections 705.02, 709.06.