NOTE TO THE FILE
SERIAL NUMBER: 88421176
DATE: 07/24/2019
NAME: nkenealy
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X Wikipedia
X Acronym Finder Protest evidence reviewed
X Other:applicant's websiteChecked:
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
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:
From: Trademarks [mailto:trademarks@zebra.com]
Sent: Wednesday, July 24, 2019 10:30 AM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Subject: RE: Trademark Application Serial No. 88421176 (VISIBILITYIQ) – Possible Examiner’s Amendment
Hi Natalie,
Thank you for reaching out. We agree with your proposed changes and appreciate that you can make them through an Examiner’s Amendment. Please proceed as you recommend.
Have a great rest of your week.
Best Regards,
Paul
From: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Sent: Wednesday, July 24, 2019 8:02 AM
To: Trademarks <trademarks@zebra.com>
Subject: Trademark Application Serial No. 88421176 (VISIBILITYIQ) – Possible Examiner’s Amendment
Importance: High
[External Email]
Dear Mr. Borovay,
I am the assigned trademark examining attorney for the above-referenced application. There are some issues with the identification of goods and services in Classes 9 and 42 that I believe we can resolve through examiner’s amendment. In Class 9, the applicant has specified a variety of software which must be clarified to be either downloadable or recorded to permit proper classification in Class 9. In Class 42, the applicant must clarify that the wording “computer software that provides real-time and historical, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface” is in the nature of on-line non-downloadable software to render this wording definite in Class 42. Additionally, it is suggested that the order of the wording in some of the other clauses be changed such that the function of the software appears first followed by the field to clarify that the function applies to the entire clause of software.
My suggestions are below with changes shown in bold and strikethrough. Please let me know if you would like to discuss these requirements or if I may enter the below changes via examiner’s amendment and then approve this application for publication.
Class 9: Downloadable or recorded computer software used for business and retail performance and analysis in the fields of loss prevention and detection, supply chain management, inventory control and analysis, retail analytics, security, healthcare, asset authentication, and real-time location systems for use in determining the physical location of a variety of objects, such as inventory, equipment or products, and people; Downloadable or recorded computer and network management software and computer hardware for the management and monitoring of mobile computers; Downloadable computer application software for cellular or mobile phones for managing and operating printers, scanners, bar code readers, and mobile computers; Computer programs, namely, downloadable or recorded software for designing, printing and creating bar code labels, tags, tickets, cards, or wristbands; Downloadable or recorded computer programs for operating printers; Downloadable or recorded software for reading bar codes, bar code readers, bar code scanning devices for physical inventory control; Computer software for optimizing spaces, mapping spaces, stocking configurations, and dimensioning of boxes and pallets; Downloadable or recorded computer software that provides information concerning the optimal location of packages and assets in truck trailers, airplanes, rail cars, and shipping containers; Downloadable or recorded computer software used for shipping analytics, trailer loading analytics, and loss prevention
Class 42: Design and development of computer hardware and software; Providing on-line non-downloadable computer software that provides real-time and historical, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Providing temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked computers, computer hardware, printers, and Radio Frequency Identification systems (RFID) in the internet of things (IoT); Software as a Service (SaaS) services, namely, providing non-downloadable cloud-based software for use in determining the physical location of a variety of objects, such as inventory, equipment or products, and people in the fields of loss prevention and detection, supply chain management, inventory control and analysis, retail analytics, security, healthcare, asset authentication, and real-time location systems
for use in determining the physical location of a variety of objects, such as inventory, equipment or products, and people[it is suggested that the applicant change the order of these clauses to render the wording clearer]; Providing online non-downloadable computer analytics software that aggregates and correlates RFID, micro-locationing and video data; Computer software design for others; Computer software development in the field of mobile point-of-sale transactions; Platform as a service (PAAS) featuring computer software platforms for use in determining the physical location of a variety of objects, such as inventory, equipment or products, and people in the fields of loss prevention and detection, supply chain management, inventory control and analysis, retail analytics, security, healthcare, asset authentication, and real-time location systemsfor use in determining the physical location of a variety of objects, such as inventory, equipment or products, and peopleanalytics [it is suggested that the applicant change the order of this identification to render the function of the software clear]; Design, development, and implementation of on-line non-downloadable computer software for use in optimizing spaces, mapping spaces, stocking configurations, and dimensioning of boxes and pallets; on-line non-downloadable software applications for performing shipping analytics, trailer loading analytics, and loss prevention for use in the field of business analytics, for performing shipping analytics, trailer loading analytics, and loss prevention [it is suggested that the applicant change the order of this identification to render the function of the software clear]; Design, development, and implementation of on-line non-downloadable computer software that provides information concerning the optimal location of packages and assets in truck trailers, airplanes, rail cars, and shipping containers; Temporary use of non-downloadable software for tracking physical movement for use with motion-detecting sensors
Please let me know by phone or email if I may correct the above through an examiner's amendment or if you would like to discuss these issues. If I do not hear from you by around noon tomorrow, I will simply send an Office action to address these issues.
Kind Regards,
Natalie L. Kenealy
Trademark Examining Attorney
Law Office 104
571-272-7817