NOTE TO THE FILE
SERIAL NUMBER: 88266869
DATE: 04/29/2019
NAME: thussain
NOTE:
From: Scales, Daniel L. [mailto:dscales@choate.com]
Sent: Monday, April 29, 2019 10:50 AM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>
Cc: Trademark Docket <TDocket@choate.com>; Bauer, Sara M. <sbauer@choate.com>
Subject: RE: SERIAL NUMBER 88266869 ENERGID - one issue
Dear Ms. Hussain,
Thank you for your email. Our client will agree to amend the ID to add “downloadable and recorded” before software:
Downloadable and recorded computer software to monitor and control factory manufacturing processes; Home and office automation systems comprising wireless and wired controllers, controlled devices, and downloadable and recorded software for lighting, HVAC, security, safety and other home and office monitoring and control applications; downloadable and recorded industrial process control software; Simulators for the steering and control of vehicles; downloadable and recorded virtual reality training simulation software in the field of Robotics
Please let me know if you need anything else.
Sincerely,
Daniel
Daniel L. Scales
Choate, Hall & Stewart LLP
Two International Place
Boston, MA 02110
t +1 617.248.5281
f +1 617.502.5281
Assistant: Wanda Woodford
t +1 617.248.4896
From: Hussain, Tasneem [mailto:Tasneem.Hussain@USPTO.GOV]
Sent: Monday, April 29, 2019 6:13 AM
To: TMAdmin
Cc: Scales, Daniel L.
Subject: RE: SERIAL NUMBER 88266869 ENERGID - one issue
**External Email**
Good morning,
I look forward to hearing from someone today.
Sincerely,
/Ms. Tasneem Hussain/
From: Hussain, Tasneem
Sent: Thursday, April 25, 2019 6:19 AM
To: tmadmin@choate.com
Cc: dscales@choate.com
Subject: SERIAL NUMBER 88266869 ENERGID - one issue
Good morning,
I just received notice that my approval of publication of this mark was withdrawn because applicant must clarify the format of the wording in Class 9. Under Nice 11-2019, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, applicant must specify if the software is downloadable and/or recorded in Class 9 or if the applicant is providing their temporary, online non-downloadable use which would be a service in Class 42. The following is suggested:
“Downloadable computer software to monitor and control factory manufacturing processes; home and office automation systems comprising wireless and wired controllers, controlled devices, and downloadable software for lighting, HVAC, security, safety and other home and office monitoring and control applications; downloadable industrial process control software; simulators for the steering and control of vehicles; downloadable virtual reality training simulation software in the field of Robotics” in Class 009
If you agree to the above/clarify the information above, I can issue an Examiner’s Amendment and re-approve the application immediately. Otherwise, I will have to issue an Office Action and you can respond thereafter within six months. Please let me know how you would like to proceed before 12pm (EST) on Monday.
Thank you,
/Ms. Tasneem Hussain/