NOTE TO THE FILE
SERIAL NUMBER: 88352339
DATE: 12/04/2019
NAME: cbuongiorno
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
email Attorney/ApplicantRequested Law Library search 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:X OTHER:
From: Hetu, Jennifer M. <JHetu@honigman.com>
Sent: Wednesday, December 4, 2019 8:28 AM
To: Buongiorno, Christopher <Christopher.Buongiorno@USPTO.GOV>
Subject: RE: Message from 5712729251 5712729251 (+15712729251) Application Serial No. 88352339
Chris,
Thanks for your email. Yes, please enter the identification as amended below via EA.
Best,
Jennifer
Jennifer M. Hetu
___________________________________
HONIGMAN LLP
O 248.566.8452
M 703.254.3812
From: Buongiorno, Christopher [mailto:Christopher.Buongiorno@USPTO.GOV]
Sent: Wednesday, December 4, 2019 7:53 AM
To: Hetu, Jennifer M. <JHetu@honigman.com>
Subject: RE: Message from 5712729251 5712729251 (+15712729251) -- Application Serial No. 88352339
Hi Jennifer,
Thank you for responding to my voicemail. I am withdrawing the 2(e)(4) refusal but there is a segment of the identification in Class 42 that needs further clarification before I can approve the mark for publication. The required language is set forth below. Without specifying that the software is “non-downloadable,” there is a significant chance that the application would be withdrawn from publication if I approved it because the software could be perceived as goods.
“Providing temporary use of online non-downloadable middleware for providing an interface between software applications and operating systems; Software as a service (SaaS) featuring computer software for use as an application programming interface (API); Software as a service (SaaS) featuring computer software for voice command and recognition software and speech to text conversion software;
Providing online on-downloadable graphical user interface software, [specify, non-downloadable] computer programs for user interface design, [specify, non-downloadable] voice command and recognition software, and [specify, non-downloadable] speech to text conversion software;
providing online non-downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices;
providing online non-downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices;
providing temporary use of online non-downloadable middleware for providing an interface between an artificial intelligence engine and non-downloadable software for application performance management and non-downloadable analytic software” – Class 42.
With your permission, I can enter the amendment via an Examiner’s Amendment and approve the mark for publication.
Regards,
Christopher Buongiorno
United States Patent & Trademark Office
Law Office 102
(571) 272-9251