NOTE TO THE FILE
SERIAL NUMBER: 88364421
DATE: 01/31/2020
NAME: rnkojo
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:Dear Rhoda,
Thank you for your help on these cases when we spoke on the phone earlier in the week. I spoke to the client, and they request the following amendments to the description of services (changes to the language from the office action are underlined). If these are acceptable, please make the examiner’s amendment. If there are still issues, please reach out to me at 720-507-1425. I will be at a conference tomorrow but will be monitoring my phone and likely will be able to call you back if you call. Also available M-Th next week.
App. Ser. No. 88364421 (ION)
International Class 041:
Educational services, namely, providing non-downloadable education materials in nature of articles and reports in the field of configuration, use, and operation of digital asset payment channels and digital asset payment channel nodes; educational services, namely, providing non-downloadable education materials in nature of articles and reports in the field of development and use of digital asset payment channel computer software applications for use in connection with digital asset payment channels; educational services, namely, providing non-downloadable education materials in nature of articles and reports in the field of payment channel troubleshooting, namely, troubleshooting of problems with computer software for use as a digital asset payment channel; providing information and news in the field of current events relating to digital asset payment channels; Educational services, namely, conducting seminars, lectures, and workshops in in the field of configuration, use, and operation of digital asset payment channels and digital asset payment channel nodes and distribution of educational material in connection therewith.
App. Ser. No. 88364439 “R"
International Class 041:
Educational services, namely, providing non-downloadable education materials in nature of articles and reports in the field of use, management, and understanding of digital assets and blockchains.
Class 016 is not desired. Descriptions in classes 036 and 042 are acceptable to the Applicant.
Best regards,
Scott
Scott Sanderson
Patent Attorney
Denver, Colorado
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On Jan 23, 2020, at 4:57 PM, Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV> wrote:
Dear Mr. Sanderson:
This message concerns the above-referenced Trademark Applications for the marks “ION” and “R” in Serial Nos. 88364421; 88364439.
I am in receipt of your Responses to Office Action communications for the above-referenced trademark applications. Some of applicant’s suggested amendments to the identifications are acceptable, however a few identification entries primarily in International Class 41 remain indefinite and must be corrected. In an effort to expedite resolution of this issue, I am contacting you via email to resolve it by Examiner’s Amendment. Upon such resolution and depending upon the nature of the amendments, I may be able to approve both marks for publication right away. If you would like to discuss the below, I am available to do so tomorrow, Friday, January 24, 2020, between 11:00am and 5pm EST as well as Monday, January 27, 2020 between 11am and 5pm EST.
The following requirement applies to Application Serial No. 88364421 for the mark “ION”.
REQUIREMENT – AMEND IDENTIFICATION AND/OR CLASSIFICATION OF SPECIFIC SERVICES IN INTERNATIONAL CLASS 41
For the reasons set forth below, specific wording in the identification of services is unacceptable as indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 41
The wording “…providing education materials live and on-line in the field…” must be clarified because it is indefinite and too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, use of the wording “providing” in connection with such goods as “educational materials” could include retail store services featuring educational materials classified in International Class 35, while the distribution of such educational materials as part of educational workshops, seminars, classes, or other specific modes of instruction is classified in International Class 41. Thus, for all references to this wording, applicant must amend the identification to specify whether it offers educational materials as goods or as distributed elements in connection with educational services.
If accurate, applicant may adopt any or all of the following identifications with suggested language specified in bold:
International Class 41: Educational services, namely, distribution of education materials in the field of configuration, use, and operation of digital asset payment channels and digital asset payment channel nodes; Educational services, namely, distribution of education materials in the field of development and use of digital asset payment channel computer software applications for use in connection with digital asset payment channels; Educational services, namely, distribution ofeducation materials in the field of payment channel troubleshooting, namely, troubleshooting of problems with computer software for use as a digital asset payment channel; Providing information and news in the field of current events relating to digital asset payment channels;
International Class 35: Retail store and online retail store services featuring educational materials in the fields of configuration, use, and operation of digital asset payment channels and digital asset payment channel nodes, development and use of digital asset payment channel computer software applications for use in connection with digital asset payment channels, and payment channel troubleshooting, namely, troubleshooting of problems with computer software for use as a digital asset payment channel.
Scope Advisory
Applicant should note that it may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
The following requirement applies to Application Serial No. 88364439 for the mark “R”.
REQUIREMENT – AMEND IDENTIFICATION AND/OR CLASSIFICATION OF SPECIFIC SERVICES IN INTERNATIONAL CLASS 41
For the reasons set forth below, specific wording in the identification of services is unacceptable as indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 41
The wording “…providing education materials live and on-line in the field…” must be clarified because it is indefinite and too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, use of the wording “providing” in connection with such goods as “educational materials” could include retail store services featuring educational materials classified in International Class 35, while the distribution of such educational materials as part of educational workshops, seminars, classes, or other specific modes of instruction is classified in International Class 41. Additionally, use of the wording “blockchains” renders the field of use for the goods and/or services unclear. Thus, applicant must amend the identification to specify whether it offers educational materials as goods or as distributed elements in connection with educational services and clarify the nature of the “blockchains” field of use.
If accurate, applicant may adopt any or all of the following identifications with suggested language specified in bold:
International Class 36: Digital asset exchange services featuring blockchain technology; Financial services, namely, providing financial information in the nature of order books being real-time listings of purchase orders and sale orders for exchange market transactions when conducting decentralized trading of digital assets; Financial services, namely digital asset price quotations being cryptocurrency and digital asset exchange price quotations;
International Class 35: Retail store and online retail store services featuring educational materials in the field of use, management, and understanding of digital assets and blockchain technology;
International Class 41: Educational services, namely, distribution of education materials in the field of use, management, and understanding of digital assets and blockchain technology;
International Class 42: Providing online non-downloadable software for trading, clearing, and confirming the validity of digital asset exchange market transactions; Providing non-downloadable software online for providing order books in the nature of real-time listing of purchase orders and sale orders for exchange market transactions when conducting decentralized trading of digital assets.
Scope Advisory
Applicant should again note that it may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
RESPONSE GUIDELINES
If the above-referenced amended identifications of services are acceptable to you, I can make the changes myself with an “Examiner’s Amendment”. I would simply need approval by email or telephone at the number below, from you, the authorized attorney of record for the applicant, Radar Relay, Inc.
Applicant should be aware that if applicant adds an additional class to either of the applications, applicant will be required to pay the additional fee for any added classes. In such case, I will be required to issue an “Examiner’s Amendment/Priority Action” wherein the Examiner’s Amendment portion of the letter would reflect the agreed changes to the identification in the application records and the Priority Action portion of the letter would reflect the requirement to pay additional fees for any added International Classes.
If, you would like to discuss further, to expedite processing, we can schedule a phone call for anytime tomorrow, Friday, January 24, 2020, between 11:00am and 5pm EST as well as Monday, January 27, 2020 between 11am and 5pm EST, to hopefully resolve the issue. You may also respond to this email with your approval or concerns regarding the above-referenced changes to the application records. I would like to discuss resolution of this issue by close of business Monday January 27, 2020. However if you are unavailable prior to close of business January 27th, then I must issue Final Actions to which you will have 6 months to respond.
Thank you for your time,
Rhoda
Rhoda Nkojo
Trademark Attorney - Law Office 117
United States Patent & Trademark Office
(PH): (571) 272-8468
Email: rhoda.nkojo@uspto.gov
Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.