Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88322145

DATE:                                05/13/2019

NAME:                               oalao

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:
    X   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           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:

 X   OTHER: Communiation with applicant's attorney:

 

From: Brett A. August [mailto:BAA@pattishall.com]
Sent: Monday, May 13, 2019 2:36 PM
To: Alao, Oreoluwa <Oreoluwa.Alao@USPTO.GOV>
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88322145 - PATHFINDER

 

Dear Oreoluwa,

 

Thank you for your phone message and the email below.  On behalf of the applicant, I hereby agree with your proposed amendment to the G&S. 

 

Cordially yours,

 

Brett

 

 

	Brett A. August Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP 200 South Wacker Drive Suite 2900 Chicago, IL 60606-5896 Direct: (312) 554-7962 Main: (312) 554-8000 Fax: (312) 554-8015 BAA@pattishall.com www.pattishall.com

 

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From: Alao, Oreoluwa [mailto:Oreoluwa.Alao@USPTO.GOV]
Sent: Monday, May 13, 2019 1:15 PM
To: Brett A. August
Subject: U.S. TRADEMARK APPLICATION NO. 88322145 - PATHFINDER

 

External email, exercise caution.

 

Dear Mr. August,

 

This communication is in reference to an application filed on behalf of Nuance Communications, Inc. to register a  trademark for PATHFINDER (USPTO Application No. 88322145).  The application was filed with the USPTO on 3/1/2019.  I also left a brief voice message for you this afternoon.

 

This application has been reviewed, and the mark is close to being ready for publication.  However, there is a minor issue that I would like to try and resolve via an Examiner’s Amendment so that we can finalize review of the application.  Specifically, the identification of goods and services requires amendment because the nature of the software must be clarified.  Accordingly, I propose amending the identification as set forth below to ensure the identification is definite:

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES

  

The identification of goods and services would be amended to read as follows: 

 

International Class 9: downloadable computer software for use in automated dialog creation and improvement; downloadable computer software for analysing customer interaction with contact center agents to improve customer service

International Class 42: Software as a service (SAAS) services featuring computer software for use in automated dialog creation and improvement; providing on-line non-downloadable computer software for analysing customer interaction with contact center agents to improve customer service

Please contact me at your earliest convenience, but no later than close of business on Wednesday, May 15, 2019, to further address this application.  You may also respond by email if the proposed amendment is acceptable and you have no follow-up questions.

 

Please note that an Examiner’s Amendment is being proposed in this case because minor amendments are needed and it is assumed minimal time is needed to accept or reject the proposed amendments.  However, because of the nature of the review process, an Office Action will issue if we are unable to address the issue raised via an Examiner’s Amendment; the Office Action will allow your client additional time to review the proposed amendments.  If such time is needed please let me know.

 

Thank you in advance for your time and please do not hesitate to call or email me if you have any questions.

 

 

Sincerely,

 

 

Oreoluwa Alao

Trademark Examining Attorney

Law Office 108

U.S. Patent & Trademark Office

571-270-7210

oreoluwa.alao@uspto.gov