Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88303970

DATE:                                07/30/2019

NAME:                               lthomasriggs

NOTE:         

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

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

From: Llewellyn, Paul C. [mailto:Paul.Llewellyn@arnoldporter.com]
Sent: Tuesday, July 30, 2019 10:25 AM
To: Thomas-Riggs, Leslie <Leslie.Thomas-Riggs@USPTO.GOV>
Cc: Docketing, Trademark <Trademark.Docketing@arnoldporter.com>; Worksman, Jennifer <Jennifer.Worksman@arnoldporter.com>
Subject: FW: TRADEMARK APPLICATION - SN 88303970 (design mark) - RESPONSE REQUIRED BY C.O.B. 7/31/19

 

Dear Ms. Thomas-Riggs -

 

Thank you for your email and for your call yesterday.  The amendment to Class 38 that you proposed (highlighted in yellow below) is acceptable.  Please feel free to make the change via an Examiner’s Amendment.  Please let me know if there are any other issues to discuss.

 

Best regards,

Paul

_______________
Paul C. Llewellyn
Partner

Arnold & Porter
250 West 55th Street | New York, New York 10019-9710
T: +1 212.836.7828 | F: +1 212.836.6463
Paul.Llewellyn@arnoldporter.com | www.arnoldporter.com

From: Thomas-Riggs, Leslie <Leslie.Thomas-Riggs@USPTO.GOV>
Sent: Monday, July 29, 2019 10:12 AM
To: Llewellyn, Paul C. <Paul.Llewellyn@arnoldporter.com>
Subject: TRADEMARK APPLICATION - SN 88303970 (design mark) - RESPONSE REQUIRED BY C.O.B. 7/31/19

 

 External E-mail 

Dear Mr. Llewellyn,

 

I am the examining attorney assigned to the above-referenced application.  We spoke by telephone a short while ago.  As mentioned, this application was approved for publication on April 26, 2019; however, approval of the application has been withdrawn to address the issue(s) below.  I apologize for any inconvenience this may cause applicant.

 

As discussed, the wording “Providing private and secure real time electronic transactions over a computer network” is overbroad and indefinite. Specifically, as written, the nature of the electronic transactions is unclear, and the services are broad enough to include services in more than one class. For example, as written, such wording is broad enough to include providing private and secure real time electronic cash transactions over a computer network, which are Class 36 services.  The following amended identification of services in Class 38 is suggested, if accurate:

 

Class 038:  Providing private and secure real time electronic communication over a computer network; Providing private and secure real time electronic transactions over a computer network, namely, communicating and routing trade information involving orders, entry and execution services, to others via a global computer network; Electronic transmission for others of securities and financial information via computer linking services, namely, communicating and routing trade information involving orders, trade entry and trade execution, to others via a global computer network

 

The identification of goods and services in Classes 9 and 36 are acceptable as currently worded.

 

With your authorization to do so, I can amend the identification of services via Examiner’s Amendment.  Please call or respond by email letting me know if the above wording for the identification of services in Class 38 is acceptable.  

 

I would appreciate a response by close of business WEDNESDAY JULY 31, as I have an internal deadline to meet.  If I do not hear from you by then, I will move forward with an Office action formalizing the above issue.  If you have any questions, please do not hesitate to contact me.

 

Best regards,

 

/Leslie Ann Thomas-Riggs/

 

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 125

P:  (571) 272-5469

F:  (571) 273-3216

 

 

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