NOTE TO THE FILE
SERIAL NUMBER: 88379010
DATE: 08/19/2019
NAME: joakes
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:
X phone X 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:Examiner Oakes,
Thank you for your message, and for speaking with me last week to confirm that “provision of credit and loan services” should remain in the specification. We agree to your proposed amendment, which I have included in redline below for your convenience. Please let me know if you need anything further.
Financial services, namely, the provision of credit and debit cards in the nature of
Payment processing services, namely, credit card and debit card transaction processing services;Charge card and credit card payment processing services, Credit card authorization services, Credit card factoring services, Credit card payment processing services; Payment processing services, namely, credit card and debit card transaction processing services; Financial services, namely,funding online cash accounts from prepaid cash cards and credit card accounts; provision of credit and loan services.
Best,
Karissa Blyth | Associate | T: +1.404.853.8012
From: Oakes, Jeffrey <Jeffrey.Oakes@USPTO.GOV>
Sent: Wednesday, August 14, 2019 3:09 PM
To: Blyth, Karissa <KarissaBlyth@eversheds-sutherland.us>
Subject: RE: TM Application No. 88379010, VERY
Hi Ms. Blyth,
I put together potential language for the amended identification, which is outlined below. I wanted to make sure that language is acceptable before issuing an Examiner’s Amendment. Also, I will be required to obtain your bar information (bar number, State, and year of admission) and an attestation of good standing. I should also note, if you choose to respond by email, all relevant email communications must be placed in the official application record, which would include your bar information.
Class 36: “Financial services, namely, the provision of credit and debit cards in the nature of charge card and credit card payment processing services, credit card authorization services, credit card factoring services, credit card payment processing services, funding online cash accounts from prepaid cash cards and credit card accounts, and payment processing services, namely, credit card and debit card transaction processing services.”
Thanks, Ms. Blyth!
Jeffrey A. Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 128
Phone: (571) 272-8653
From: Blyth, Karissa [mailto:karissablyth@eversheds-sutherland.com]
Sent: Tuesday, August 13, 2019 12:04 PM
To: Oakes, Jeffrey <Jeffrey.Oakes@USPTO.GOV>
Subject: RE: TM Application No. 88379010, VERY
Mr. Oakes,
Thank you for reaching out to us. Our client has agreed to your proposed revisions shown in bold below. Please proceed to enter these by Examiner’s amendment, and let us know if you need anything further from us.
Best regards,
Karissa Blyth | Associate | T: +1.404.853.8012
From: Oakes, Jeffrey <Jeffrey.Oakes@USPTO.GOV>
Sent: Monday, August 12, 2019 2:33 PM
To: Blyth, Karissa <KarissaBlyth@eversheds-sutherland.us>
Subject: TM Application No. 88379010, VERY
Hi Ms. Blyth,
Again, thanks for your patience on this case! The only issue concerns the identified services in International Class 36. Below, I have recounted the original identification and the amended identification. The potential suggestions are provided at the end with bolded wording showing changes. I tried to list all the choices directly from the ID Manual. Everything in Class 35 is fine and requires no changes.
Original Class 36: Financial services; provision of credit and debit cards, provision of credit and loan facilities.
Amended Class 36: Financial services, namely, the provision of credit and debit cards; provision of credit and loan services.
Suggested Class 36: Financial services, namely, the provision of credit and debit cards in the nature of _____ [Payment processing services, namely, credit card and debit card transaction processing services; Charge card and credit card payment processing services; Credit card authorization services; Credit card factoring services; Credit card payment processing services; Payment processing services, namely, credit card and debit card transaction processing services; Financial services, namely, funding online cash accounts from prepaid cash cards and credit card accounts]; provision of credit and loan services
Thanks, Ms. Blyth! Have a great week!
Jeffrey A. Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 128
Phone: (571) 272-8653