Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88329777

DATE:                                05/22/2019

NAME:                               eshen

NOTE:         

Searched:                                                             
 X   Google                            
     Lexis/Nexis                       
 X   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:
        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:

     OTHER:

 

 

From: Shamo, Denis [mailto:Denis.Shamo@bakermckenzie.com]
Sent: Wednesday, May 22, 2019 9:16 AM
To: Shen, Elizabeth <Elizabeth.Shen@USPTO.GOV>
Cc: GIPSCOfficeSupport <gipscofficesupport@bakermckenzie.com>; *DAL - Trademarks <dallastrademarks@bakermckenzie.com>
Subject: RE: Trademark Application for FACTORY NAVIGATOR – Serial No. 88329777

 

Dear Ms. Shen,

 

My client agrees to make the identification amendment proposed in your May 16 e-mail, and also agrees to the disclaimer of “factory” apart from the mark as a whole.

 

I authorize entry of these changes via Examiner’s Amendment.

 

Best regards,

 

- Denis

 

 

Denis V. Shamo
Baker & McKenzie LLP
1900 North Pearl; Suite 1500
Dallas, TX 75201
United States of America
Tel:  +1 214 978 3000
denis.shamo@bakermckenzie.com

 

This message may contain confidential and privileged information. If it has been sent to you in error, please reply to advise the sender of the error and then immediately delete this message. Please visit www.bakermckenzie.com/disclaimers for other important information concerning this message.

 

From: Shen, Elizabeth [mailto:Elizabeth.Shen@USPTO.GOV]
Sent: Thursday, May 16, 2019 14:19
To: *DAL - Trademarks
Cc: GIPSCOfficeSupport
Subject: [EXTERNAL] Trademark Application for FACTORY NAVIGATOR – Serial No. 88329777

 

Re: Trademark Application for FACTORY NAVIGATOR – Serial No. 88329777

 

Dear Mr. Shamo,

                                       

I am the Trademark Examining Attorney at the U.S. Patent and Trademark Office examining this application and wanted to discuss the following issues with you:

 

Amended Identification of Services: Some of the wording in the identification must be further specified to ensure it is properly classified and definite.  Specifically, the wording “Providing advisory and consulting services in the field of optimization of logistics processes, business simulation and analytics, and enterprise resource planning” in Class 35 is indefinite and overly broad.  The wording is indefinite because the specific nature of the advisory and consultancy services is unclear.  Further, this wording may encompass services in more than one class.  For example, advisory and consultancy services in the field of enterprise resource planning may refer to the business advisory and consultancy services as it relates to business processes in Class 35 or it may refer to the advisory and consultancy services as it relates to ERP software.

 

Please let me know if you agree to the following suggested identification of services, if accurate:

 

Class 35: Providing business advisory and consulting services in the field of optimization of logistics processes, business simulation and analytics, and business processes

 

Class 42:  Software as a service (SAAS) services featuring simulation and analytics software for optimizing logistics processes and conducting risk assessments; software as a service (SAAS) services featuring software for enterprise resource planning (ERP); consulting services in the field of software as a service; consulting services in the field of enterprise resource planning software

 

Disclaimer: Some of the wording in the mark must be disclaimed before your application can proceed.  Please let me know if you agree to the following statement being added to the record:

 

No claim is made to the exclusive right to use “FACTORY” apart from the mark as shown.

 

If you agree, I can make all changes for you via an Examiner’s Amendment.  Please let me know by Wednesday, May 22, 2019.  If you need additional time or if you would prefer a formal Office Action letter, please let me know and I can issue a Priority Action fully explaining the requirements.

 

Sincerely,

 

Liz Shen

 

 

/Elizabeth Shen/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 121

(571) 270-7111

elizabeth.shen@uspto.gov

 

Please note that all relevant e-mail communications will be placed in the official application record. 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.