NOTE TO THE FILE
SERIAL NUMBER: 88352149
DATE: 06/07/2019
NAME: exu
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
X Changed TRADEUPS to: amend ID, add disclaimerX OTHER:
From: James Graham [mailto:james.graham@jci.com]
Sent: Friday, June 07, 2019 8:58 AM
To: Xu, Elaine <Elaine.Xu@USPTO.GOV>
Cc: Christopher Michael Parent <christopher.michael.parent@jci.com>; Susan Cain <susan.cain.sanchez@jci.com>; JCI-Trademarks <trademarks@jci.com>
Subject: RE: United States Trademark Application Serial No. 88352149
Hi Elaine,
Thank you for your email and proposed amendments. I am responding with the legal authority to bind Tyco Fire & Security GmbH as its Managing Director. I am also Vice President and Chief IP Counsel.
Please enter an Examiner’s amendment for Serial No. 88352149 EXACQ CLOUD with the following changes:
1) No claim is made to the exclusive right to use “CLOUD” apart from the mark as shown.
2) “platform as a service (PAAS) featuring a computer software platform for use in video capturing, cloud storage, management, and distribution of video surveillance content; providing temporary use of on-line non-downloadable computer database software for submission and remote management of surveillance video content through computers, smartphones, and tablets for home, commercial building, personal property, and physical security purposes; providing temporary use of on-line non-downloadable software that provides remote access to video surveillance systems used to monitor security in homes and commercial buildings; providing temporary use of on-line non-downloadable software for monitoring surveillance video; providing temporary use of on-line non-downloadable software that enables users to identify surveillance locations and monitor video and surveillance system status; providing temporary use of on-line non-downloadable software for interactive video surveillance mapping; providing temporary use of on-line non-downloadable software for managing, reporting and trouble-shooting video surveillance systems for homes and commercial buildings; providing temporary use of on-line non-downloadable software that enables users to securely transmit and store surveillance video content; application service provider featuring application programming interface (API) software for integration of live and recorded surveillance video content into websites; providing temporary use of on-line non-downloadable software to connect web enabled devices to video surveillance security cloud networks to permit users to access, stream and share live surveillance video content.”
Regards
James
James Graham
Vice President, Chief Intellectual Property Counsel
Johnson Controls
+44 (0) 7790914584 mobile
From: Susan Cain
Sent: Thursday, June 6, 2019 9:12 PM
To: Xu, Elaine <Elaine.Xu@USPTO.GOV>; JCI-Trademarks <trademarks@jci.com>
Cc: James Graham <james.graham@jci.com>; Christopher Michael Parent <christopher.michael.parent@jci.com>
Subject: RE: United States Trademark Application Serial No. 88352149
Hi Elaine,
Thank you very much. We will be in touch as soon as possible.
I confirm the approval for the proposed changes will come from an individual with the legal authority to bind Tyco Fire & Security GmbH.
Kind Regards,
Susan
Susan Cain
Legal Specialist, Intellectual Property
Johnson Controls
Tel: +561.912.6093
Cell: +954.415.0780
Fax: +609.806.3882
6600 Congress Avenue / Boca Raton, FL 33487 / United States
Please note my new email address susan.cain.sanchez@jci.com
Twitter: @JohnsonControls • LinkedIn: Johnson Controls
The information in the e-mail is confidential and may be privileged. If you are not the intended recipient, please destroy this message, delete any copies which may exist on your system and notify the sender immediately. You should not retain, copy or use this e-mail for any purpose, nor should you disclose all or part of its contents to any other person. Any and all rights to privilege have not been waived.
From: Xu, Elaine [mailto:Elaine.Xu@USPTO.GOV]
Sent: Thursday, June 06, 2019 3:12 PM
To: Susan Cain <susan.cain.sanchez@jci.com>; JCI-Trademarks <trademarks@jci.com>
Cc: James Graham <james.graham@jci.com>; Christopher Michael Parent <christopher.michael.parent@jci.com>
Subject: RE: United States Trademark Application Serial No. 88352149
Hi Susan,
Thanks for the update! That said, if I don’t hear from you by Friday afternoon, I would need to issue an office action.
Also please note the following:
Pursuant to USPTO policies and procedures, please confirm that approval for the proposed changes comes from an individual with legal authority to bind Tyco Fire & Security GmbH (e.g. a corporate officer). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii).
Best,
Elaine
From: Susan Cain [mailto:susan.cain.sanchez@jci.com]
Sent: Thursday, June 06, 2019 1:22 PM
To: Xu, Elaine <Elaine.Xu@USPTO.GOV>; JCI-Trademarks <trademarks@jci.com>
Cc: James Graham <james.graham@jci.com>; Christopher Michael Parent <christopher.michael.parent@jci.com>
Subject: United States Trademark Application Serial No. 88352149
Dear Ms. Xu,
Thank you for contacting us rather than issuing a formal office action.
We are reviewing your proposed amendments and an authorized person will provide you with a substantive response on behalf of Tyco Fire & Security GmbH no later than next week.
Kind Regards,
Susan
Susan Cain
Legal Specialist, Intellectual Property
Johnson Controls
Tel: +561.912.6093
Cell: +954.415.0780
Fax: +609.806.3882
6600 Congress Avenue / Boca Raton, FL 33487 / United States
Please note my new email address susan.cain.sanchez@jci.com
Twitter: @JohnsonControls • LinkedIn: Johnson Controls
The information in the e-mail is confidential and may be privileged. If you are not the intended recipient, please destroy this message, delete any copies which may exist on your system and notify the sender immediately. You should not retain, copy or use this e-mail for any purpose, nor should you disclose all or part of its contents to any other person. Any and all rights to privilege have not been waived.
From: Xu, Elaine [mailto:Elaine.Xu@USPTO.GOV]
Sent: Wednesday, June 05, 2019 11:36 AM
To: JCI-Trademarks <trademarks@jci.com>
Cc: Susan Cain <susan.cain.sanchez@jci.com>
Subject: United States Trademark Application Serial No. 88352149
Importance: High
This email is intended for Susan Cain Sanchez and/or any authorized party
United States Trademark Application Serial No. 88352149
Dear Susan,
I am the assigned trademark examining attorney for the above-referenced application. As of now there are 2 outstanding issues with the application:
1) The wording “CLOUD” needs to be disclaimed. For clarification about what a “disclaimer” means: This wording is descriptive of the applied-for goods or services in your application. An applicant may not claim exclusive rights to terms or designs that others may need to use to describe or show their goods or services in the marketplace. A disclaimer does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. For additional information, please see http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-disclaimer-requirement
2) The identification of goods needs to be modified for improved clarity and definiteness and in order to meet USPTO requirements.
If the changes below are acceptable, I will issue an examiner's amendment and move the application towards publication accordingly pending receipt of the foreign registration certificate:
1) No claim is made to the exclusive right to use “CLOUD” apart from the mark as shown.
2) “platform as a service (PAAS) featuring a computer software platform for use in video capturing, cloud storage, management, and distribution of video surveillance content; providing temporary use of on-line non-downloadable computer database software for submission and remote management of surveillance video content through computers, smartphones, and tablets for home, commercial building, personal property, and physical security purposes; providing temporary use of on-line non-downloadable software that provides remote access to video surveillance systems used to monitor security in homes and commercial buildings; providing temporary use of on-line non-downloadable software for monitoring surveillance video; providing temporary use of on-line non-downloadable software that enables users to identify surveillance locations and monitor video and surveillance system status; providing temporary use of on-line non-downloadable software for interactive video surveillance mapping; providing temporary use of on-line non-downloadable software for managing, reporting and trouble-shooting video surveillance systems for homes and commercial buildings; providing temporary use of on-line non-downloadable software that enables users to securely transmit and store surveillance video content; application service provider featuring application programming interface (API) software for integration of live and recorded surveillance video content into websites; providing temporary use of on-line non-downloadable software to connect web enabled devices to video surveillance security cloud networks to permit users to access, stream and share live surveillance video content.”
Please let me know by phone or email how you would like to proceed or if you have any questions about the application as soon as possible.
Pursuant to USPTO policies and procedures, please confirm that approval for the proposed changes comes from an individual with legal authority to bind Tyco Fire & Security GmbH (e.g. a corporate officer). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii).
Kind regards,
Elaine Xu
Trademark Examining Attorney
Law Office 128
(571) 270-5297