NOTE TO THE FILE
SERIAL NUMBER: 88404873
DATE: 12/09/2019
NAME: amorris
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 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:X OTHER:
From: Morris, Alina <Alina.Morris@USPTO.GOV>
Sent: Monday, December 9, 2019 5:49 PM
To: Collins, Randall Johnson <randall.collins@hp.com>
Cc: HP Trademarks <hptrademarks@hp.com>; Abel, Kimberly <kimberly.abel@hp.com>; Knecht, Carolyn E <carolyn.e.knecht@hp.com>
Subject: RE: U.S. Trademark Application No. 88404873 - HP - Request for Authorization for Examiner’s Amendment; Please respond by 12/17/2019 (Attn: Carolyn Knecht)
Dear Randall,
Thank you very much for your reply. Your proposed amendment looks good – I will proceed with the Examiner’s Amendment.
Sincerely,
Alina
Alina Morris
Trademark Examining Attorney, Law Office 117
United States Patent and Trademark Office
Phone: 571-272-2256
Email: alina.morris@uspto.gov
From: Collins, Randall Johnson <randall.collins@hp.com>
Sent: Monday, December 9, 2019 5:21 PM
To: Morris, Alina <Alina.Morris@USPTO.GOV>
Cc: HP Trademarks <hptrademarks@hp.com>; Abel, Kimberly <kimberly.abel@hp.com>; Knecht, Carolyn E <carolyn.e.knecht@hp.com>
Subject: RE: U.S. Trademark Application No. 88404873 - HP - Request for Authorization for Examiner’s Amendment; Please respond by 12/17/2019 (Attn: Carolyn Knecht)
Dear Ms. Morris,
I work with Carrie Knecht at HP on trademarks. We would like to proceed with your proposed amendments, with one minor exception: we would take out the word “remote” from your suggestion, leaving the following description:
• Device-as-a-Service (DaaS) services, namely, technical support services in the nature of
remoteadministration and management of computer hardware devices for the purpose of assisting in the optimization of information technology (IT) assets and resources
Please let us know if this is acceptable. Thank you!
Kind regards,
Randall
Randall J. Collins
Trademark, Copyright, and Marketing Counsel
Global Legal Affairs
randall.collins@hp.com
T +1 650 316 7292
HP Inc.
1501 Page Mill Road
Palo Alto, CA 94304
United States
From: Morris, Alina <Alina.Morris@USPTO.GOV>
Sent: Friday, December 6, 2019 11:47 AM
To: HP Trademarks <hptrademarks@hp.com>
Subject: U.S. Trademark Application No. 88404873 - HP - Request for Authorization for Examiner’s Amendment; Please respond by 12/17/2019 (Attn: Carolyn Knecht)
Serial No.: 88404873
Mark: HP
Applicant: HP Hewlett Packard Group LLC
Attn: Carolyn Knecht
Dear Ms. Knecht,
I am the Trademark Examining Attorney at the U.S. Patent and Trademark Office reviewing the application set forth above. In reviewing the response to the Office Action filed on 12/3, there are two minor remaining issues with the identification. With your authorization, these may be resolved with an Examiner’s Amendment.
Identification of Services
1) The amendment from “Device- as-a-Service (DaaS) services” to “Device-as-a-Service (DaaS) services, namely, for the purpose of assisting in the optimization of information technology (IT) assets and resources” is still indefinite. It’s not clear what the function of services are; something more is needed to clarify what is the service being performed.
The following would be acceptable, if accurate:
· Device-as-a-Service (DaaS) services, namely, technical support services in the nature of remote administration and management of computer hardware devices for the purpose of assisting in the optimization of information technology (IT) assets and resources
2) A stray struck-through word (“on”) carried through from my suggestion for clarifying “consulting services for advice on computer system management and operation” to “Consulting services and advising in
onthe field of computer system management and operation,” and I can delete that extraneous word “on.”
If you can respond by email or telephone by Tuesday December 17, 2019, these last minor issues may be resolved through the issuance of an Examiner’s Amendment. Otherwise, a formal Office Action will be issued, and you will have six (6) months to respond.
Please note that although the USPTO does not accept emails as responses to Office Actions, email can be used for informal communications such as this, and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Please let me know if you have any questions.
Thank you,
/Alina Morris/
Alina Morris
Trademark Examining Attorney, Law Office 117
United States Patent and Trademark Office
Phone: 571-272-2256
Email: alina.morris@uspto.gov