NOTE TO THE FILE
SERIAL NUMBER: 88309506
DATE: 05/06/2019
NAME: sferrell
NOTE:
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 TRADEUPS
From: Andrew Morabito [mailto:andrew@morabitolawoffice.com]
Sent: Saturday, May 04, 2019 2:37 PM
To: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Subject: Re: USPTO Trademark Applications: 88309506 RAVEN (Your Docket No. KEMA19.TM.02) and 88309517 RAVEN PREDICTIVE ANALYTICS (KEMA19.TM.03)
Hello Stephen, you have the client's approval to make the changes to the identification of goods and the disclaimer.
Regards,
ANDREW MORABITO
Patent Attorney
P: (585) 586 5770 | Morabito Law Offices
F: (585) 383 1496
From: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Sent: Friday, May 3, 2019 10:33 AM
To: Andrew Morabito
Subject: USPTO Trademark Applications: 88309506 RAVEN (Your Docket No. KEMA19.TM.02) and 88309517 RAVEN PREDICTIVE ANALYTICS (KEMA19.TM.03)
Good Morning Andrew Morabito,
I am reviewing the above referenced applications for your client, Meraglim Holdings. In review of these applications there are a couple of issues that can be corrected without the need for an office action.
First, because of the broad category of software services in these applications, there are several registrations that present a potential Section 2(d) refusal (see, e.g., reg. nos. 2783529 and 5301567). However, to avoid these refusals, applicant may amend the identification of services to further specify the field in which the services are provided. Specifically, the suggested identification would read, with suggested changes underlined:
International Class 42: Software as a service (SAAS) services featuring software for predictive analytics, enterprise analytics, data governance, data integration, optimization analytics, data management, data warehousing, data analysis, pattern discovery, contextual prediction, predictive modelling, recognitions, segmentations, regressions, and visualizations all in the fields of financial and capital markets; Platform as a service (PAAS) featuring computer software platforms for predictive analytics, enterprise analytics, data governance, data integration, optimization analytics, data management, data warehousing, data analysis, pattern discovery, contextual prediction, predictive modelling, recognitions, segmentations, regressions, and visualizations all in the fields of financial and capital markets
Please let me know if you would approve of my amending the identification as described for each application.
Additionally, for 88309517, we require a disclaimer of the wording “PREDICTIVE ANALYTICS” in the mark because it is descriptive of applicant’s software for predictive analytics and related functions. The suggested disclaimer would read:
“No claim is made to the exclusive right to use “PREDICTIVE ANALYTICS” apart from the mark as shown.”
Please let me know if you would approve of my adding the disclaimer as described for 88309517.
In summary, we require the following approvals from you:
1) Amended Identification of Services as described above for both applications.
2) Disclaimer as described above for 88309517.
Approving these changes will place the applications in condition for approval for publication.
Please respond no later than 2 PM EST on Tuesday, May 7, 2019.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
/Steven W. Ferrell Jr./
Trademark Examining Attorney
Law Office 121
Phone: (571)270-3424
E-mail: steven.ferrell@uspto.gov
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-.05.