Notation to File

DV

DoubleVerify Inc

Re: Trademark Application Serial No. 88/360562 for DV CAUTION: This email is from an external source. Do not click links or attachments unless it's from a verified sender.

NOTE TO THE FILE

SERIAL NUMBER: 88360562

DATE:    02/03/2020

NAME: jfickes

NOTE:

Searched:
     Google
     Lexis/Nexis
     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
        email                               Attorney/Applicant

     Requested Law Library search           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:

X   OTHER:

Thank you for your email. We agree with amended "on-line" description. Please issue the examiner's amendment.

Thank you,

Scott Woldow

Scott D. Woldow

Partner

p | 202-973-2612
f | 202-263-4312
e | swoldow@sgrlaw.com
1055 Thomas Jefferson Street, NW | Suite 400 | Washington, DC 20007
www.sgrlaw.com | My Bio | vCard

From: Fickes, Jeri <Jeri.Fickes@uspto.gov>
Sent: Monday, February 3, 2020 1:04:45 PM
To: swoldow@sgrlaw.com <swoldow@sgrlaw.com>
Subject: Re: Trademark Application Serial No. 88/360562 for DV

CAUTION: This email is from an external source. Do not click links or attachments unless it's from a verified sender.

Dear Mr. Woldow,

I have received the response and am willing to withdraw the mere descriptiveness refusal. Before the application can proceed in the registration process, however, the following issue must be addressed.

The identification of services is indefinite and must be clarified because in view of the Office’s change in policy for identification of International Class 42 software, the software as a service (SAAS) in International Class 42 must be clarified as “on-line non-downloadable software” or “temporary use of non-downloadable software.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Applicant may adopt the following wording, if accurate:

Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for reporting online advertising analytics; Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for reporting online advertising analytics, namely, for determining the quality of digital advertising information; Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for providing global marketing measurements, data and analytics; Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for authenticating the quality of digital media ~~fir~~ for viewability, fraud and brand safety; Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software designed to protect brand equity and reputation; Software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for measuring viewability of digital advertising; software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software to eliminate waste, drive campaign performance and drive effectiveness of advertising; software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software to identify and eliminate fraud while measuring brand protection; software as a service (SAAS) services featuring [specify as “on-line” or “temporary use of”] non-downloadable software for certifying media authenticity; Developing customized software to protect brand equity, brand coverage and company reputation; Developing customized software for measuring brand needs.

Please let me know if it would be acceptable to enter the amendment to the identification of services by examiner’s amendment (and whether applicant would prefer the wording “on-line” or “providing temporary use of.” The application is otherwise ready for publication.

Jeri Fickes

Trademark Examining Attorney
Law Office 107

USPTO

571/272-9157

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