Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88292958

DATE:                                03/12/2019

NAME:                               mhartnett1

NOTE:         

Searched:                                                             
 X   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       X   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:

 

From: Stephen Jenei [mailto:sjenei@jeneilaw.com]
Sent: Wednesday, March 06, 2019 4:53 PM
To: Hartnett, Megan K. <Megan.Hartnett@USPTO.GOV>
Subject: Re: Trademark Applications - Control Bionics Holdings Pty Ltd.
Importance: High

 

Dear Ms. Hartnett,

 

Thank you for your note.  I would be happy to take care of this as easily as possible.  I will try to answer each section below.

 

ENTITY: All Applications (SNs. 88292889, 88292906, 88292958, 88293000, 88219899, 88218209, 88219923)

 

For all applications:  The applicant is listed as a “corporation” but a “Pty Ltd.” Is understood to be a “Proprietary Limited Company.”  This is correct and the applications can be amended. 

 

IDENTIFICATION:  NEURONODE TRILOGY (SN. 88292889), TRILOGY (SN. 88292906), TRILOGY w. design (SN. 88292958), TRILOGY THE POWER OF THREE (SN. 88293000)

 

Please amend identification of goods as: 

 

Class 9:                Augmentative communication products, namely, wireless communication devices for voice, data or image transmission used as communication aids; electro-dynamic apparatus for the remote control of signals; connected devices being measuring instruments, namely, electronic sensors to measure nerve activity and functional status of the body; detectors, namely, electric sensors for detecting nerve impulses and for use with augmentative alternative communication devices; computer hardware, namely, computer interface hardware; downloadable computer programs for monitoring bioelectrical (EMG) signal sensor interfaces and augmentative alternative communication systems; downloadable computer software, for use in facilitating communicating and providing augmentative alternative communication; computer hardware for augmentative alternative communication systems; downloadable computer software applications, for use in facilitating communicating and providing augmentative and alternative communication systems         

 

TRILOGY w. design (SN. 88292958)

 

Please amend to streamline the description as indicated:  The mark consists of the word "TRILOGY" having the design of an upwardly pointing triangle to the left of the word with rounded corners and edges; the design of a zig-zag comprised of five line segments with a circle at each end of the zig-zag appears within the triangle.  

 

TRILOGY THE POWER OF THREE (SN. 88293000)

Please amend to streamline the description as indicated:  The mark consists of the word "TRILOGY" having the design of an upwardly pointing triangle to the left of the word with rounded corners and edges; the design of a zig-zag comprised of five line segments with a circle at each end of the zig-zag appears within the triangle; with the words "THE POWER OF 3" written below the main word and triangular design elements.

 

NEURONODE TRILOGY (SN. 88292889)

 

A substitute specimen will be submitted.

 

IDENTIFICATION: SAY-IT NOW with design (SN. 88219899), SAY-ITNOW in stand. Char (SN.  88218209), SAY-ITNOW (SN. 88219923)

 

Please amend the identification of goods as indicated: 

 

Class 9:                Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, augmentative communication (AAC) software for facilitating communication for users who are non-verbal, have difficulty speaking, are learning language, or suffer from verbal or language disabilities; Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, software for use by people with physical and cognitive communication disabilities for generating synthetic speech messages; Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, software that enables users with disabilities to access multi-media, Internet and other applications on their mobile phones, smart phones, tablet computers, portable media players and handheld computers; Computer application software for portable computer devices, namely, software for use by speech impaired users to generate voice output to assist in communication; Computer application software for networking Internet connected devices and systems of devices; software in the nature of a mobile application that enables users with disabilities to remotely monitor, control, and receive updates and notifications from computer hardware devices

 

SAY-IT NOW with design (SN. 88219899)

 

A substitute specimen will be submitted.

 

Please let me know if you have any questions or require any additional information.  Thank you again for all of your help in these matters.

 

Best regards,

Stephen

 


 


Stephen Jenei


Jenei LLC |  Business & IP Law



8044 Montgomery Road  |  Suite 700  |  Cincinnati, OH 45236-2926


513.280.8858 Direct |  513.280.8865 Main |  513.280.8867 Fax

sjenei@jeneilaw.com  |  jeneilaw.com

 

 



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From: "Hartnett, Megan K." <Megan.Hartnett@USPTO.GOV>
Date: Wednesday, March 6, 2019 at 2:29 PM
To: Docketing Request <jeneilaw@blackhillsip.com>, Stephen Jenei <sjenei@jeneilaw.com>
Subject: Trademark Applications - Control Bionics Holdings Pty Ltd.

 

Dear Mr. Jenei,

 

This is in regard to seven copending applications for Control Bionics Holdings Pty Ltd.  I would like to discuss making some amendments to the applications which if you approve can be made on my end.  There are a couple issues that require action on your part as well.  Please see all the issues below.  I will be out of the office over the next couple days, returning Monday, and I must take action on these by Tuesday, March 12, so if you need more time or would like to discuss any issues in more detail I can always send a Priority Action out on anything that can’t be resolved. 

 

ENTITY: All Applications (SNs. 88292889, 88292906, 88292958, 88293000, 88219899, 88218209, 88219923)

 

For all applications:  The applicant is listed as a “corporation” but a “Pty Ltd.” Is understood to be a “Proprietary Limited Company.”  I can make this amendment or allow you to explain through response. 

 

IDENTIFICATION:  NEURONODE TRILOGY (SN. 88292889), TRILOGY (SN. 88292906), TRILOGY w. design (SN. 88292958), TRILOGY THE POWER OF THREE (SN. 88293000)

 

The identification of goods for multiple applications must be amended to clarify the specific goods or to specify the downloadable nature of the goods.  Additionally, for software “for use in” is typically not acceptable as it doesn’t state the actual function of the software.  Further, as these applications were filed after changes to our ID manual, you must specify that the software is “downloadable” in this class. 

 

Class 9:                Augmentative communication products, namely, [indicate specific goods, e.g., Wireless communication devices for voice, data or image transmission, microphones, headsets for use with computers and telephones, digital signal processors] used as communication aids; electro-dynamic apparatus for the remote control of signals; connected devices being measuring instruments, namely, [indicate instruments, e.g., digital signal processors, electric sensors] to measure nerve activity and functional status of the body; detectors, namely, electric sensors for detecting nerve impulses and for use with augmentative alternative communication devices; computer hardware, namely, computer interface hardware; downloadable computer programs for monitoring [indicate type, e.g., software, computer] interfaces and augmentative alternative communication systems; downloadable computer software, for use in [indicate function, e.g., facilitating] communicating and [indicate function, e.g., providing] augmentative alternative communication; computer hardware for augmentative alternative communication systems; downloadable computer software applications, for use in [indicate function, e.g., facilitating] communicating and [indicate function, e.g., providing]augmentative and alternative communication systems         

 

TRILOGY w. design (SN. 88292958)

 

Amend to streamline the description to the following:  The mark consists of the word "TRILOGY" having the design of an upwardly pointing triangle to the left of the word with rounded corners and edges; the design of a zig-zag comprised of five line segments with a circle at each end of the zig-zag appears within the triangle.  

 

TRILOGY THE POWER OF THREE (SN. 88293000)

Amend to streamline the description to the following:  The mark consists of the word "TRILOGY" having the design of an upwardly pointing triangle to the left of the word with rounded corners and edges; the design of a zig-zag comprised of five line segments with a circle at each end of the zig-zag appears within the triangle; with the words "THE POWER OF 3" written below the main word and triangular design elements.

 

NEURONODE TRILOGY (SN. 88292889)

 

ACTION REQUIRED:  A new specimen will be required as this is advertising, which is not acceptable to support goods. 

 

IDENTIFICATION: SAY-IT NOW with design (SN. 88219899), SAY-ITNOW in stand. Char (SN.  88218209), SAY-ITNOW (SN. 88219923)

 

Three of the copending applications have one entry that must be amended to clarify the function of the software.  Please see below.

 

Class 9:                Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, augmentative communication (AAC) software for [indicate function, e.g., facilitating communication for] users who are non-verbal, have difficulty speaking, are learning language, or suffer from verbal or language disabilities; Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, software for use by people with physical and cognitive communication disabilities for generating synthetic speech messages; Computer application software for mobile phones, smart phones, tablet computers, portable media players and handheld computers, namely, software that enables users with disabilities to access multi-media, Internet and other applications on their mobile phones, smart phones, tablet computers, portable media players and handheld computers; Computer application software for portable computer devices, namely, software for use by speech impaired users to generate voice output to assist in communication; Computer application software for networking Internet connected devices and systems of devices; software in the nature of a mobile application that enables users with disabilities to remotely monitor, control, and receive updates and notifications from computer hardware devices

 

SAY-IT NOW with design (SN. 88219899)

 

ACTION REQUIRED:  The specimen shows no means of ordering the goods or downloading the goods.  For website specimens supporting goods, this functionality must be shown on the webpage.  While the other copending applications show a matching mark within a screenshot of the software, this application does not include a matching mark.  A substitute specimen is required.

 

Thank you,

Megan M. Hartnett

Examining Attorney

U.S. Patent and Trademark Office

Trademark Law Office 123

(571) 270-1977

megan.hartnett@uspto.gov

 

Please note that all relevant e-mail communications will be placed in the official application record. 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 §§705.02, 709.06.