NOTE TO THE FILE
SERIAL NUMBER: 88336690
DATE: 02/12/2020
NAME: nkenealy
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: Erica Tritt <Erica@sladlaw.com>
Sent: Wednesday, February 12, 2020 2:37 PM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>; Nicole Hedgemon <Nicole@sladlaw.com>; Mandy Sattler <mandy@sladlaw.com>; Jason H. Cooper <Jason@sladlaw.com>
Cc: Jeffrey Sladkus <jeff@sladlaw.com>; Amy Lester-Drew <ALester-Drew@sladlaw.com>
Subject: RE: Trademark Application Serial No. 88336690 (INVERSION) – Possible Examiner’s Amendment after Removal from Publication
Natalie,
I am an attorney of record on this application and I authorize the EA. Please proceed.
Erica L. Tritt
Partner | The Sladkus Law Group
tel 404.252.0900 | direct 678.402.7812
From: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Sent: Wednesday, February 12, 2020 2:35 PM
To: Nicole Hedgemon <Nicole@sladlaw.com>; Mandy Sattler <mandy@sladlaw.com>; Erica Tritt <Erica@sladlaw.com>; Jason H. Cooper <Jason@sladlaw.com>
Cc: Jeffrey Sladkus <jeff@sladlaw.com>
Subject: FW: Trademark Application Serial No. 88336690 (INVERSION) – Possible Examiner’s Amendment after Removal from Publication
Importance: High
Ms. Hedgemon, Ms. Sattler, Ms. Tritt and Mr. Cooper,
Per Mr. Sladkus’ out of office email, I thought I would forward the below to you in his absence today. If an attorney from the firm can authorize this amendment, I can do an examiner’s amendment to amend the identification of services and move the application back into the publication process.
Kind regards,
Natalie L. Kenealy
Trademark Examining Attorney
United States Patent and Trademark Office
571-272-7817
From: Kenealy, Natalie
Sent: Wednesday, February 12, 2020 2:16 PM
To: jeff@sladlaw.com
Subject: Trademark Application Serial No. 88336690 (INVERSION) – Possible Examiner’s Amendment after Removal from Publication
Importance: High
Dear Mr. Sladkus,
I am the assigned trademark examining attorney for the above-referenced application. The application was withdrawn from publication because the wording “Non-downloadable computer software used by software developers for securely sharing data assets, excluding video data, through an automatically generated HTTP/S based Application Programming Interface (API)” has been determined to be overly broad as it could include Class 9 recorded software as written. To render the wording definite in Class 42, we need to add “providing online” to the front of that clause to render it definite in Class 42. Thus with your permission, I would like to amend the wording in Class 42 to read as follows:
Class 42: Providing on-line, non-downloadable computer software used by software developers for securely sharing data assets, excluding video data, through an automatically generated HTTP/S based Application Programming Interface (API); Application service provider featuring Application Programming Interface (API) software for use in building software applications; Computer software consulting in the field of Application Programming Interface (API) software
Please let me know by phone or email if I may correct the above through an examiner's amendment or if you would like to discuss these issues.
Kind Regards,
Natalie L. Kenealy
Trademark Examining Attorney
Law Office 104
571-272-7817