NOTE TO THE FILE
SERIAL NUMBER: 88318464
DATE: 05/09/2019
NAME: jblazich
NOTE:
Discussed file with
Attorney via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSDear Examining Attorney –
Thank you. I confirm that “computer” should be retained.
Best regards,
Steven P. Fallon | SHAREHOLDER
300 S. Wacker Dr. Suite 2500 | Chicago, IL 60606 | Direct: (312) 987.4004 | Main: (312) 360.0080 | Fax: (312) 360.9315 | WWW.GBC.LAW
CONFIDENTIALITY NOTE This electronic mail may contain information which is confidential or privileged and exempt from disclosure under applicable law. The information is intended to be for the use of the recipients named in this mail. If you are not an intended recipient, be aware that any disclosure, copying, distribution or use of the contents of this information is without authorization and is prohibited. If you receive this electronic mail in error, please notify us by return electronic mail and destroy this mail immediately. Thank you for your cooperation.
From:
Date: Thursday, May 9, 2019 at 9:03 AM
To: Steven Fallon <sfallon@gbc.law>
Cc: Docket <docket@gbclaw.net>, Olivia DeHaven <odehaven@gbclaw.net>
Subject: RE: Proposed Examiner's Amendment 0920.135074; #88318464
Dear Mr. Fallon,
Thank you for your response. The wording “Computer” needs to be retained in your ID due to scope issues – the removal of this wording impermissibly broadens the scope of the goods. As such, an acceptable amendment would read : “Class 9: Downloadable and recorded computer software for conducting video conferencing on computer devices including smartphones, tablets, and personal computers.” This same issue also affect your copending application, No. 88314856, where “computer” must be retained in the Class 9 ID language.
Please confirm that this is acceptable.
Thank you.
Please note that although all relevant e-mail communications will be placed in the official application record, this email communication does not constitute a formal response to an office action. 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.
From: Steven Fallon [mailto:sfallon@gbc.law]
Sent: Thursday, May 09, 2019 8:48 AM
To: Cc: Docket <docket@gbclaw.net>; Olivia DeHaven <odehaven@gbclaw.net>
Subject: Proposed Examiner's Amendment 0920.135074; #88318464
Dear Examining Attorney –
Thank you for your email below. The software is provided under the mark in both ways, i.e., downloadable and recorded on supplied hardware systems. I therefore request that the amendment to class 9 include both.
I authorize the following amendments, consistent with your request.
Class 9 -
ComputerDownloadable and recorded software for conducting video conferencing on computer devices including smartphones, tablets, and personal computers.
Please let me know of any questions.
Best regards,
Steve
Steven P. Fallon | SHAREHOLDER
300 S. Wacker Dr. Suite 2500 | Chicago, IL 60606 | Direct: (312) 987.4004 | Main: (312) 360.0080 | Fax: (312) 360.9315 | WWW.GBC.LAW
CONFIDENTIALITY NOTE This electronic mail may contain information which is confidential or privileged and exempt from disclosure under applicable law. The information is intended to be for the use of the recipients named in this mail. If you are not an intended recipient, be aware that any disclosure, copying, distribution or use of the contents of this information is without authorization and is prohibited. If you receive this electronic mail in error, please notify us by return electronic mail and destroy this mail immediately. Thank you for your cooperation.
From: TMDocket <tmdocket@gbclaw.net>
Date: Wednesday, May 8, 2019 at 10:02 AM
To: Steven Fallon <sfallon@gbc.law>
Subject: FW: 0920.135074; #88318464
From:
Sent: Tuesday, May 7, 2019 5:07 PM
To: tmdocket@gbclaw.net
Subject: 0920.135074; #88318464
This email is intended for Steven Fallon and/or any other authorized attorney
United States Trademark Application Serial No. 88318464
Dear Mr. Fallon,
I am the assigned trademark examining attorney for the above-referenced application. Your application will be ready to proceed once the identification of goods and services have been amended. Specifically, per Nice 11-2019, software in Class 9 must be specified as “downloadable” or “recorded” to be properly classified in this class; this requirement applies to applications filed on and after 1 January 2019. The proposed changes are shown in bold font below. Once the following changes have been granted, I will issue an examiner’s amendment and proceed with your application accordingly. Thank you for your time and consideration in this matter.
Amended Identification of Goods
Class 9: Downloadable computer software for conducting video conferencing on computer devices including smartphones, tablets, and personal computers
Class 42: Providing non-downloadable software for conducting video conferencing on computer devices
iincluding smartphones, tablets, and personal computersPlease respond to this email by phone call or email by 5pm on Friday, 10 May 2019 with your response and/or if you have any questions about the application.
Thank you,
Please note that although all relevant e-mail communications will be placed in the official application record, this email communication does not constitute a formal response to an office action. 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.