NOTE TO THE FILE
SERIAL NUMBER: 88388185
DATE: 10/29/2019
NAME: rcaysido
NOTE:
Discussed file with
Attorney via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPS
From: James R. Muldoon <jmuldoon@HarrisBeach.com>
Sent: Tuesday, October 29, 2019 10:09 AM
To: Caysido, Rebecca <Rebecca.Caysido@USPTO.GOV>
Cc: Trademarks <trademarks@HarrisBeach.com>; Kate Piraino <kpiraino@HarrisBeach.com>
Subject: RE: OFFICIAL USPTO EMAIL - Trademark Application Serial No. 88388185 AULTRA - Response Required
Dear Ms. Caysido,
We have conferred with our client and propose the following amendment to the description of goods and services. While one current product is a thin, gold-based solder preform, the Applicant intends to use the mark with other traditional solder forms. Therefore, we propose amending the descriptions in each of the two service classifications, we have moved the term “gold-based” to another earlier location. Not all of the solder forms will be “thin”, and have omitted that proposed term. We have indicated additional language as bold and underlined and would delete a portion of the description indicated in bold and brackets below
IC 035. G & S: Technical consulting services in the nature of [P]provision of technical information and advice to consumers regarding the selection of products to be purchased, said products being [nano-materials,] gold-based specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, and solder foil[, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium]
IC 040. G & S: Technical consulting services in the nature of [P]provision of technical information and advice to consumers regarding manufacturing process[ing] parameters being [nano-materials,] gold-based specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, and solder foil[, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium]
The full description after amendment would read as follows:
IC 035. G & S: Technical consulting services in the nature of provision of technical information and advice to consumers regarding the selection of products to be purchased, said products being gold-based specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, and solder foil
IC 040. G & S: Technical consulting services in the nature of provision of technical information and advice to consumers regarding manufacturing process parameters being gold-based specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, and solder foil
We would consent to this change being made by examiner’s amendment. If you require any additional information or would like to discuss this matter further, please do not hesitate to contact me.
Best regards,
Jim Muldoon
James R. Muldoon
PartnerHARRIS BEACH PLLC
ATTORNEYS AT LAW
333 West Washington Street, Suite 200
Syracuse, NY 13202
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New York, NY 10005
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Save a tree. Read, don't print, emails.From: Caysido, Rebecca <Rebecca.Caysido@USPTO.GOV>
Sent: Monday, October 28, 2019 4:00 PM
To: James R. Muldoon <jmuldoon@HarrisBeach.com>; Trademarks <trademarks@HarrisBeach.com>
Subject: OFFICIAL USPTO EMAIL - Trademark Application Serial No. 88388185 AULTRA - Response Required
OFFICIAL USPTO EMAIL - Trademark Application Serial No. 88388185 AULTRA - Response Required
Dear Mr. Muldoon,
The above-referenced application has been re-assigned to me as the trademark examiner. I have reviewed the Response and the issue to be resolved is the amendments to the identification of services in order to reincorporate the original identifications to stay within the scope of the original application. In particular, the original identification stated “thin, gold based solder preforms”; however the amended identification improperly broadens that wording to all “solder preforms”, and the original wording of “Technical consulting services” should be re-incorporated. See the bold text below.
Please let me know by email or phone, if you agree that the changes below are acceptable, and I will issue an Examiner's Amendment stating:
Amended identificationS of services
The identifications of services only are amended to read as follows:
International Class 35: Technical consulting services in the nature of provision of technical information and advice to consumers regarding the selection of products to be purchased, said products being nano-materials, specialty alloys, solder paste, thin, gold-based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium
International Class 40: Technical consulting services in the nature of provision of technical information and advice to consumers regarding manufacturing process parameters for nano-materials, specialty alloys, solder paste, thin, gold-based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium
See TMEP §§1402.01, 1402.01(e).
Please let me know by email or phone by 12 PM ET on Monday, November 4, 2019, if you agree to allow me to correct the above by Examiner's Amendment.
Please do not hesitate to contact me should you have any questions. If I do not hear from you by that time, I will have to issue an Office action.
Best regards,
/Rebecca T. Caysido/
Examining Attorney
Trademark Law Office 123
(571) 270-0926