NOTE TO THE FILE
SERIAL NUMBER: 88352915
DATE: 12/04/2019
NAME: rbuker
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: Ferguson, Lisel M. <lisel.ferguson@procopio.com>
Sent: Tuesday, December 3, 2019 6:34 PM
To: Desjardins, Rachel <Rachel.Desjardins@USPTO.GOV>
Cc: Lawson, Pamela E. <pamela.lawson@procopio.com>; Docketing <Docketing@procopio.com>
Subject: RE: U.S. Trademark Application No. 88352915 ARC - Request for Examiner's Amendment
Dear Examiner Desjardins,
Thanks for your email. Your proposed amendments to the Identification of Services for Application No. 88352915 are acceptable. Please enter an examiners amendment. If you need anything further from me please let me know.
Sincerely,
Lisel
LISEL M. FERGUSON
PARTNER
PROCOPIO
P. 619.515.3207 | F. 619.744.5407 | lisel.ferguson@procopio.com
525 B STREET, SUITE 2200, SAN DIEGO, CA 92101
View Profile | LinkedIn | procopio.com
From: Desjardins, Rachel [mailto:Rachel.Desjardins@USPTO.GOV]
Sent: Tuesday, December 03, 2019 2:12 PM
To: Ferguson, Lisel M.
Cc: Lawson, Pamela E.; Docketing
Subject: U.S. Trademark Application No. 88352915 ARC - Request for Examiner's Amendment
Dear Ms. Ferguson:
I am the USPTO Examiner reviewing the above-referenced application.
I have completed my review of the applicant’s response to Office action filed on October 29, 2019. Applicant’s response resolves the requirement to clarify the identification of services, however I am unable to withdraw the likelihood of confusion refusal without further amendment to the application. I believe that these issues may be resolved informally through amendment to the identification of services. Specifically, if appropriate and with your express authorization, I can amend the application and issue an Examiner’s Amendment.
Please respond as soon as is convenient, but not later than noon (EST) on Thursday, December 5, 2019
Identification of Services
In light of applicant’s arguments regarding the use and limited scope of its services as being for in-flight entertainment, I am requesting that applicant amend the identification of services to further clarify this issue. If applicant agrees to this amendment, I will withdraw the likelihood of confusion refusal with respect to U.S. Registration Nos. 5599348.
International Class 042: Software as a service featuring software for use in flight planning and flight navigation for use as in-flight entertainment for airline passengers; chart preparation being mapping services in digital form for use as in-flight entertainment for airline passengers; application service provider featuring software for use in flight planning and flight navigation for use as in-flight entertainment for airline passengers; design of in-flight entertainment computer programs and in-flight entertainment software relating to aircraft; design and development of computer software for evaluation and calculation of data in connection with aircraft flight path for use as in-flight entertainment for airline passengers; providing temporary use of online non-downloadable, interactive software featuring interactive maps, allowing users to explore places, plan and book travel activities for use as in-flight entertainment for airline passengers
If the above is acceptable and with your express authorization (e.g., return email, telephone call), I can amend the application, as noted above, and issue an Examiner’s Amendment.
Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707. All relevant e-mail communications will be placed in the official application record.
If you have any questions, please do not hesitate to contact me.
Best regards,
/Rachel E. Desjardins/
Trademark Examining Attorney
Law Office 123
U.S. Patent & Trademark Office
Phone: 571-270-0104
Email: Rachel.Desjardins@USPTO.gov