NOTE TO THE FILE
SERIAL NUMBER: 88253606
DATE: 03/27/2019
NAME: jmalashevich
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 Mr. Malashevich,
I consent to your proposed Examiner’s Amendment, to clarify that the software in our application is downloadable.
I’m sorry I forced the extra step here—Kimberly suggested that you would require my direct communication, and in an effort to save time I caused us all to spend more of it! My apologies for any inconvenience, and thanks for your patience.
Regards,
Francis
Francis Toldi
Senior CounselTrademarks, Copyrights & Corporate Marketing
francis.toldi@hp.com
T 1-650-316-4810
HP Inc.
1501 Page Mill Road Mailstop 1560
Palo Alto, CA 94304
USA
From: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Sent: Wednesday, March 27, 2019 12:09 PM
To: HP Trademarks <hptrademarks@hp.com>
Cc: Toldi, Francis <francis.toldi@hp.com>
Subject: RE: Examiner's Amendment for U.S. Trademark SN 88253606 (WORKEXPERT)--for immediate response
Dear Ms. Abel:
Thank you for your reply. However, the Office unfortunately cannot accept consent to an examiner’s amendment from paralegals and legal office staff, even if authorized to give consent from the attorney representing the applicant.
Would it be possible for Mr. Toldi to reply to this e-mail chain to ratify the consent?
I apologize for any inconvenience. Thank you.
Sincerely,
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597
From: HP Trademarks [mailto:hptrademarks@hp.com]
Sent: Wednesday, March 27, 2019 3:00 PM
To: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Cc: Toldi, Francis <francis.toldi@hp.com>
Subject: RE: Examiner's Amendment for U.S. Trademark SN 88253606 (WORKEXPERT)--for immediate response
Dear Mr. Malashevich,
I am assisting Francis Toldi. Thank you for reaching out regarding the below trademark application for WORKEXPERT.
We confirm the amendment you have suggested is acceptable with the Applicant and we authorize this change.
Kind regards,
Kimberly Abel
Trademark Paralegal
HP Inc.
10300 Energy Drive, 2-1H0001
Spring, TX 77389
Email: Kimberly.abel@hp.com
From: Malashevich, Jason <Jason.Malashevich@USPTO.GOV>
Sent: Wednesday, March 27, 2019 9:41 AM
To: HP Trademarks <hptrademarks@hp.com>
Subject: Examiner's Amendment for U.S. Trademark SN 88253606 (WORKEXPERT)--for immediate response
Dear Mr. Toldi:
As of January 1, 2019, under Nice 11-2019, computer software must be specified as “downloadable” or “recorded” in order for it to be acceptable in International Class 9.
Accordingly, this application may proceed to publication if Applicant is willing to clarify the goods as follows:
Class 9àdownloadable workflow management software for mobile devices.
Please let me know, at your earliest convenience, whether Applicant agrees to the above or if you have any questions.
Thank you.
Sincerely,
Jason Malashevich, Trademark Examining Attorney
Law Office 114
(571) 272-4597