NOTE TO THE FILE
SERIAL NUMBER: 88310376
DATE: 09/19/2019
NAME: gingold
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:
From: Dmitriy Makarov <dmakarov@iphorgan.net>
Sent: Thursday, September 19, 2019 12:23 PM
To: Ingold, Geraldine <Geraldine.Ingold@USPTO.GOV>
Subject: RE: USPTO TRADEMARK APPLICATION: SMARTFIT 88310376 - Response Required 091919
Dear Geraldine:
Our client accepts the proposed wording. Kindly amend the Class 9 specification to read “Downloadable and recorded computer software enabling the tailoring of automobile seats, steering column, internal and external mirrors, pedals, to the occupants' morphology through a wireless technology communicating with the onboard computer”
Very truly yours,
Dmitriy
Dmitriy O. Makarov
IpHorgan Ltd195 Arlington Heights Rd
Suite #125
Buffalo Grove
IL 60089-1768
(847) 808 5500 Tel
(847) 808 7238 Fax
dmakarov@iphorgan.com
www.iphorgan.com
ATTORNEY-CLIENT PRIVILEGED COMMUNICATION - This communication and any attachments are intended for the addressee named above only and are protected by attorney-client and/or other privileges against disclosure.
From: Dmitriy Makarov [mailto:dmakarov@iphorgan.net]
Sent: Thursday, September 19, 2019 9:47 AM
To: 'Ingold, Geraldine' <Geraldine.Ingold@USPTO.GOV>
Subject: RE: USPTO TRADEMARK APPLICATION: SMARTFIT 88310376 - Response Required 091919
Thank you. We will confirm with the client and revert by September 23, 2019.
Very truly yours,
Dmitriy
Dmitriy O. Makarov
IpHorgan Ltd195 Arlington Heights Rd
Suite #125
Buffalo Grove
IL 60089-1768
(847) 808 5500 Tel
(847) 808 7238 Fax
dmakarov@iphorgan.com
www.iphorgan.com
ATTORNEY-CLIENT PRIVILEGED COMMUNICATION - This communication and any attachments are intended for the addressee named above only and are protected by attorney-client and/or other privileges against disclosure.
From: Ingold, Geraldine [mailto:Geraldine.Ingold@USPTO.GOV]
Sent: Thursday, September 19, 2019 9:45 AM
To: Dmitriy Makarov <dmakarov@iphorgan.net>
Subject: RE: USPTO TRADEMARK APPLICATION: SMARTFIT 88310376 - Response Required
I think that suggested ID would be acceptable: Downloadable and recorded computer software enabling the tailoring of automobile seats, steering column, internal and external mirrors, pedals, to the occupants' morphology through a wireless technology communicating with the onboard computer
From: Dmitriy Makarov <dmakarov@iphorgan.net>
Sent: Thursday, September 19, 2019 10:36 AM
To: Ingold, Geraldine <Geraldine.Ingold@USPTO.GOV>
Cc: mail@iphorgan.com
Subject: RE: USPTO TRADEMARK APPLICATION: SMARTFIT 88310376 - Response Required
Thank you, Geraldine. Would the wording “Downloadable and recorded computer software..” be acceptable?
Very truly yours,
Dmitriy
Dmitriy O. Makarov
IpHorgan Ltd195 Arlington Heights Rd
Suite #125
Buffalo Grove
IL 60089-1768
(847) 808 5500 Tel
(847) 808 7238 Fax
dmakarov@iphorgan.com
www.iphorgan.com
ATTORNEY-CLIENT PRIVILEGED COMMUNICATION - This communication and any attachments are intended for the addressee named above only and are protected by attorney-client and/or other privileges against disclosure.
From: Ingold, Geraldine [mailto:Geraldine.Ingold@USPTO.GOV]
Sent: Thursday, September 19, 2019 9:31 AM
To: dmakarov@iphorgan.com
Cc: mail@iphorgan.com
Subject: USPTO TRADEMARK APPLICATION: SMARTFIT 88310376 - Response Required
Hello,
I received your response to the Office action for Serial No. 88310376. Everything looks good most part. However, there is still an issue identification of goods in International Class 9.
We require an amended identification of the goods identified in International Class 9 because the wording “Downloadable and non-downloadable computer software enabling the tailoring of automobile seats, steering column, internal and external mirrors, pedals, to the occupants' morphology through a wireless technology communicating with the onboard computer” is overbroad and can be classified in multiple classes. Downloadable software is classified as a good in Class 9 and non-downloadable software is classified as a services in Class 42. Thus, applicant must either delete the “non-downloadable” language or add international Class 42 to the application.
Specifically, the suggested identification would read, with suggested changes bolded:
International Class 9: Downloadable computer software enabling the tailoring of automobile seats, steering column, internal and external mirrors, pedals, to the occupants' morphology through a wireless technology communicating with the onboard computer
[International Class 12: No change]
Please let me know if you would approve of my amending the identification as described.
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.
Please respond no later than 2 PM EST on Monday, September 23, 2019.
Best,
Geraldine
Geraldine Ingold
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 272-5076
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