Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88252671

DATE:                                05/12/2020

NAME:                               jmarino

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

Dear Elle,

 

Thank you for your email. Please proceed as you have outlined below.

 

Sincerely,   Alice Denenberg

Attorney at Law

270 Madison Avenue, 8th Floor, New York, NY 10016

D: (646) 813-3577  |  O: (212) 684-3900

www.grr.com

Link to Bio

 

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From: Marino, Elle <Elle.Marino@USPTO.GOV>
Sent: Friday, May 08, 2020 1:01 PM
To: Alice Denenberg <adenenberg@grr.com>
Subject: RE: DMD Applications 88252671 and 88976127 Our refs: 9002/004 and 9002/28

 

Hi Alice,

 

Application No. 88252671 was approved for publication on 4/1/20, but was unfortunately pulled back during further review due to indefinite wording in the identification of goods in Class 009.  Specifically, it was found that “Online downloadable electronic publications, namely guides, forms, brochures, and pamphlets, in the field of medical cannabis” is overbroad/potentially misclassified due to the fact that downloadable electronic publications are a Class 009 good, but online electronic publications are a Class 041 service.  To simply correct this error, we can delete the wording “online” from the identification.  If accurate, the following Class 009 goods are suggested:

 

International Class 009: Downloadable mobile applications for helping users find medical cannabis providers through use of a medical cannabis provider directory; Downloadable mobile applications for tracking medical symptoms of users; Downloadable mobile application for medical office patient sign in and patient scheduling; Downloadable mobile applications featuring information on medical cannabis; Downloadable mobile applications for use in the collection and analysis of personal medical data and for providing product recommendations; Online downloadable electronic publications, namely guides, forms, brochures, and pamphlets, in the field of medical cannabis

 

Similarly, Application No. 88976127 was also pulled back due to indefinite wording in the identification in Class 044.  Specifically, “Providing information in the nature of on-line resource guides in the field of medical cannabis” and “Providing information in the nature of news, articles, research, and case studies in the field of medical cannabis” is indefinite and overly broad.  It was suggested to add the word “medical” before “information.”  If accurate, the following is recommended in Class 044:

 

International Class 044: Telemedicine services; Providing medical information in the nature of on-line resource guides in the field of medical cannabis; Providing medical information in the nature of news, articles, research, and case studies in the field of medical cannabis

 

I apologize for the delay in processing these applications, but please let me know as soon as possible if these amendments are acceptable, and I can re-approve them for publication.  Thank you!