NOTE TO THE FILE
Sent to TICRS as Serial Number: 88422242SERIAL NUMBER: 88422254
DATE: 07/24/2019
NAME: nkenealy
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
Wikipedia
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 10:38 AM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>; Trademarks <trademarks@zebra.com>
Subject: RE: Trademark Application Serial No. 88422254 and 88422242 (zebra design and ZEBRA) – Possible Examiner’s Amendment
Hi Natalie,
We approve of your proposed amendments.
Thank you,
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. 88422254 and 88422242 (zebra design and ZEBRA) – Possible Examiner’s Amendment
Importance: High
[External Email]
Dear Mr. Borovay,
I am the assigned trademark examining attorney for the above-referenced applications. There are some issues with the identification of goods in Classes 2, 9, 10 and 16 that I believe we can resolve through examiner’s amendment in each application. In Class 2, the wording “anti-counterfeiting ink” must be clarified as it can encompass ink for pens or stamps in Class 16. 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. Additionally, Class 9 contains a slash (/) between the words protect/store and this should be changed to an “and” to properly clarify the nature of the goods. The wording “time-temperature sensitive labels that monitor the condition of thermally sensitive products” in Class 10 must be amended to include “for medical purposes” to render this wording definite in Class 10. The wording “printer ribbon infused with environmentally activated ink for monitoring the condition and tracking of perishable products for determining freshness, potency, sell-by dates, and use-by dates” in Class 16 must be clarified to identify the specific variety of printer for which the ribbon will be used, e.g., computer. The wording in Classes 41 and 42 is definite and does not require amendment. My suggestions are below with changes shown in bold. 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 these files for publication.
Class 2: anti-counterfeiting printing ink; printing or printer ink
Class 9: Heat, light, and time-sensitive non-paper labels containing environmentally activated devices and indicators for monitoring the condition and tracking the pedigree of perishable products for determining freshness, potency, sell-by dates, and use-by dates; automated systems, namely, recorded or downloadable computer software, computer hardware, and communications devices in the nature of bar code readers or electronic, chemical or environmental readers for monitoring, providing information on and tracking the condition of perishable goods for determining freshness, potency, sell-by dates, and use-by dates; Temperature sensor and monitor and recording kit used to validate coolers by measuring and recording the temperature of blood and other items contained within the cooler comprised of temperature recorders, sensors and probes; Cooler validation kit for confirming temperature maintaining capability of a cooler by measuring and recording temperature within the cooler, comprised of a guide, validation standard operating procedures and supporting documents, instructional videos, password-protected web portal with document updates, USB docking station and recorded or downloadable software for temperature recorder, water and shock resistant case to protect and store kit components, namely, sensors and probes; Time-temperature sensitive labels, devices, and indicators, not for medical purposes, that monitor and provide machine readable variable environmental, supply chain tracking, and product authentication information about perishable products; Smart wireless sensors and recorded or downloadable software, portable sensor apparatus, and recorded or downloadable software application, all for managing, monitoring, and communicating environmental data and information regarding environmentally sensitive products; Recorded or downloadable software application for managing, monitoring, and communicating environmental data and information regarding environmentally sensitive products
Class 10: time-temperature sensitive labels that monitor the condition of thermally sensitive products for medical purposes; Time-temperature sensitive labels, devices, and indicators for medical use that monitor and provide machine readable variable environmental, supply chain tracking, and product authentication information about perishable products and related smart wireless sensors and software, portable sensor apparatus, and software application, sold as a unit with the foregoing labels, devices and indicators, and all for managing, monitoring, and communicating environmental data and information regarding environmentally sensitive products; Time-temperature sensitive labels, devices, and indicators for medical use that monitor and signal time and temperature exposure of thermally sensitive products
Class 16: Heat, light, and time-sensitive paper labels containing bar codes and environmentally activated indicators for monitoring the condition and tracking of perishable products for determining freshness, potency, sell-by dates, and use-by dates; Time-temperature sensitive paper labels that monitor and provide machine readable variable environmental, supply chain tracking, and product authentication information about perishable products and related smart wireless sensors and software, portable sensor apparatus, and software application, sold as a unit with the foregoing labels, and all for managing, monitoring, and communicating environmental data and information regarding environmentally sensitive products; Time-temperature sensitive paper labels that monitor and signal time and temperature exposure of thermally sensitive products; computer printer ribbon infused with environmentally activated ink for monitoring the condition and tracking of perishable products for determining freshness, potency, sell-by dates, and use-by dates; anti-counterfeiting ink for pens and stamp ink
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