Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88362606

DATE:                                01/31/2020

NAME:                               bwatson

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
    X   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:

     OTHER:

 

 

From: Stacy Grossman <stacy@stacygrossmanlaw.com>
Sent: Wednesday, January 29, 2020 4:21 PM
To: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Cc: ipDocket@stacygrossmanlaw.com
Subject: Re: Examiner's Amendment: Trademark Applications 88387441 & 88362606 / 1928

 

Thank you for this reminder.  

I reached out to the applicant, but haven't heard back yet. 

Also, while some of the changes were minor and I assume will be acceptable, you struck a few clauses in Classes 42 and 44 that had been acceptable to the previous examiner, and I might want to discuss with you.

I think it's unlikely that this will be resolved by tomorrow, but will do my best.

Kind regards,

Stacy

 

 

On Wed, Jan 29, 2020 at 4:13 PM Watson, Bridget <Bridget.Watson@uspto.gov> wrote:

Just a reminder about the pending issue below.

 

From: Watson, Bridget
Sent: Monday, January 27, 2020 5:06 PM
To: stacy@stacygrossmanlaw.com
Cc: ipDocket@stacygrossmanlaw.com
Subject: Examiner's Amendment: Trademark Applications 88387441 & 88362606 / 1928

 

This email is intended for Stacy J. Grossman and/or any authorized party

 

United States Trademark Application Serial Nos. 88387441 & 88362606 / 1928

 

Dear Ms. Grossman,

 

I am the assigned trademark examining attorney for the above-referenced applications.  The applications will be ready to proceed once applicant agrees to modify the identification of goods and services.  If the changes below are acceptable, I will issue an examiner's amendment accordingly:

 

Class 9: Online and Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Online and downloadable software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Online and downloadable computer software in the form of apps mobile applications used for database management and electronic storage of data in connection with clinical and research services in the fields of science and technology; Online and downloadable electronic databases in the field of {indicate subject matter or field}; Recorded content, namely, online computer software for electronic storage of data and database management of clinical and research services in the fields of science and technology; Online and downloadable computer software for secure online data sharing; Online and downloadable computer software platforms for electronic storage of data and database management in connection with clinical and research services in the fields of science and technology; Online downloadable artificial intelligence software for analysis of healthcare data for clinical and research purposes; Online downloadable artificial intelligence software for video surveillance; Online downloadable artificial intelligence and machine learning software for {indicate function} for clinical and research purposes; Online downloadable machine learning software for analyzing healthcare data for clinical and research purposes; Online downloadable machine learning software for video surveillance; Online downloadable machine learning software for clinical and research purposes and for analysis of health care data for clinical and research purposes; Online downloadable software to facilitate infection control inspections and quality assurance

 

Class 42: Clinical and research services in the field of science and technology, namely, in the field of {specify medical field, treatment, or procedure, e.g., radiology, chemotherapy, coronary artery bypass surgery, etc.}; Online and downloadable Software as a service (SaaS) featuring software for database processing and database analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; Providing use of online, non-downloadable computer software for for {indicate function of the software} in the field of medical and diagnostic services; IT consulting services; web site hosting services; and software as a service featuring online and downloadable software for processing and analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; and rental of online and downloadable computer software; Data warehousing; Computer security services, namely, restricting unauthorized access to {indicate e.g., hard drives, computer networks, websites, etc.};, computer virus protection services; and data recovery services for computer data; Technical support in the nature of monitoring of computer systems and network systems, namely, monitoring technological functions of computer network systems; Providing an on-line network environment featuring technology that enables users to share peer to peer data in the field of medical and diagnostic services; Design, development, and implementation of software for transforming raw data into actionable information for effective decision making in the field of healthcare organizations and solutions; electronic Data document authentication via blockchain-based software technology for maintaining health, diagnostic and medical records; electronic data storage via blockchain-based software technology for maintaining health, diagnostic and medical records; Certification of data via blockchain-based software technology for maintaining health, diagnostic and medical records; Platform as a service (PAAS) featuring computer software platforms for performing predictive analytics, big data compilation and analysis, and health care data analysis; Platform as a service (PAAS) featuring computer software platforms for processing and analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; Computer security threat analysis for protecting technical and healthcare data surveillance and assessment services; Consulting services in the field of laboratory diagnostic tests, namely, consulting in the field of analysis of genetic samplings, cultures, pathogens, microorganism and viruses; Online consulting services in the field of laboratory diagnostic tests, namely, consulting in the field of analysis of genetic samplings, cultures, pathogens, microorganism and viruses; Monitoring of bacteria in {indicate subject, e.g., drinking water} for scientific research purposes; Online scientific research consulting consulting services in the field of tracing of pathogens, microorganism and viruses, namely, consulting in outbreak surveillance, epidemiology and advice about the evolution of pathogens; Providing online, non-downloadable and downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Providing online, non-downloadable and downloadable software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Providing online, non-downloadable and downloadable artificial intelligence software for video surveillance; Providing online, non-downloadable downloadable artificial intelligence and machine learning software for {indicate function} for clinical and research purposes; Providing online, non-downloadable downloadable machine learning software for analyzing healthcare data for clinical and research purposes; Providing online, non-downloadable downloadable machine learning software for video surveillance; Providing online, non-downloadable downloadable machine learning software for clinical and research purposes and for analysis of health care data for clinical and research purposes; Providing online, non-downloadable downloadable software to facilitate infection control inspections and quality assurance; Technology supervision and remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes in the field of health care;

 

Class 44: Human mobile healthcare services; Medical advisory services; Medical diagnostic tests; Medical diagnostics testing, monitoring and reporting services; Medical diagnostic monitoring services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; Medical diagnostic testing services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; Online medical diagnostic testings; Providing information relating to medical diagnostic tests and testing results and diagnostic tests; Performing diagnoses medical diagnostic testing of infections and other illnesses; Technology supervision and monitoring in the field of health care; Monitoring of bacteria; Veterinary assistance services, namely, veterinary services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; medical consulting services in the fields of tracing of pathogens; health assessment services;, providing dental and medical information in the field of disease infection control; Healthcare data surveillance and assessment services

 

Please let me know by phone or email by Thursday, 1/30, if you agree to allow me to correct the above by an examiner's amendment or if you have any questions about the application. 

 

Kind regards,

 

Bridget Watson

Examining Attorney

United States Patent & Trademark Office

Law Office 128

Phone: 571-272-7163

Fax: 571-273-6516

 

 

--

 

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  888 Seventh Avenue, 10th Floor

  New York, NY  10106

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  www.stacygrossmanlaw.com

 

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