Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88453033

DATE:                                08/22/2019

NAME:                               jnelman

NOTE:         

Searched:                                                             
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Checked:                                                             
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Discussed file with
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     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
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     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

     OTHER:

Dear Jesse,

 

Please proceed with the amendments below in bold:

 

Class 09—            Downloadable and recorded computer programs and downloadable and recorded computer software for providing a content management and collaboration platform for presentation programs, word processing programs, spreadsheet programs and e-mail programs where the programs and software are not related to the teaching or learning of languages;  downloadable and recorded computer programs and downloadable and recorded computer software for providing productivity tools to enable users to use presentation programs, word processing programs, spreadsheet programs and e-mail programs in less time where the programs and software are not related to the teaching or learning of languages; downloadable and recorded computer programs and downloadable and recorded computer software for providing brand functionality to enable users to create content on presentation programs, word processing programs, spreadsheet programs and e-mail programs that is aligned with a corporate design where the programs and software are not related to the teaching or learning of languages.

 

Thank you again for your assistance in this matter. If you have any further questions, please do not hesitate to contact us.

 

Kindest regards,

Lourdes

 

Lourdes Perez, Esq. Attorney at Law, Registered to Practice before the US Patent & Trademark Office   Fleit Gibbons Gutman Bongini & Bianco PL   21355 East Dixie Highway, Suite 115, Miami, FL 33180, USA   305-830-2600, fax 305-830-2605, www.fggbb.com, lperez@fggbb.com

CONFIDENTIALITY NOTICE: This communication is intended only for the addressee(s) and may contain confidential and/or privileged information. Any use, disclosure, dissemination, retransmission, distribution or copying of the information in this communication by other than the intended recipient(s) is strictly prohibited. If you received this email in error, please contact the sender, delete the email from all computers and destroy all copies.

 

 

From: Lourdes Perez
Sent: Wednesday, August 21, 2019 1:03 PM
To: 'Nelman, Jesse' <Jesse.Nelman@USPTO.GOV>
Subject: RE: Clarification Needed Regarding Application SN 88453033 EMPOWER

 

Thank you, Jesse!

 

Lourdes Perez, Esq. Attorney at Law, Registered to Practice before the US Patent & Trademark Office   Fleit Gibbons Gutman Bongini & Bianco PL   21355 East Dixie Highway, Suite 115, Miami, FL 33180, USA   305-830-2600, fax 305-830-2605, www.fggbb.com, lperez@fggbb.com

CONFIDENTIALITY NOTICE: This communication is intended only for the addressee(s) and may contain confidential and/or privileged information. Any use, disclosure, dissemination, retransmission, distribution or copying of the information in this communication by other than the intended recipient(s) is strictly prohibited. If you received this email in error, please contact the sender, delete the email from all computers and destroy all copies.

 

 

From: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Sent: Wednesday, August 21, 2019 12:25 PM
To: Lourdes Perez <lperez@fggbb.com>
Cc: Dinah Fuentes <dfuentes@fggbb.com>; Paul Bianco <pbianco@fggbb.com>
Subject: RE: Clarification Needed Regarding Application SN 88453033 EMPOWER

 

Hi Lourdes,

 

The wording “and/or” is not permitted and neither is “or”.  In your example, the following would be acceptable: 

 

“Downloadable and recorded computer programs and downloadable and recorded computer software for providing a content management and collaboration platform for presentation programs, word processing programs, spreadsheet programs and e-mail programs where the programs and software are not related to the teaching or learning of languages”

 

Hope that helps. 

 

Jesse

 

From: Lourdes Perez [mailto:lperez@fggbb.com]
Sent: Wednesday, August 21, 2019 10:42 AM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Cc: Dinah Fuentes <dfuentes@fggbb.com>; Paul Bianco <pbianco@fggbb.com>
Subject: RE: Clarification Needed Regarding Application SN 88453033 EMPOWER

 

Dear Jesse,

 

Thank you for your email below. The amendments seem acceptable at first glance, but I will need to confirm with the client.

 

If possible, please let us know if “downloadable and/or recorded” is acceptable, e.g.: “Downloadable and/or recorded computer programs and downloadable and/or recorded computer software for providing a content management and collaboration platform for presentation programs, word processing programs, spreadsheet programs and e-mail programs where the programs and software are not related to the teaching or learning of languages”

 

Thank you for your assistance in this matter.

 

Kindest regards,

Lourdes

 

Lourdes Perez, Esq. Attorney at Law, Registered to Practice before the US Patent & Trademark Office   Fleit Gibbons Gutman Bongini & Bianco PL   21355 East Dixie Highway, Suite 115, Miami, FL 33180, USA   305-830-2600, fax 305-830-2605, www.fggbb.com, lperez@fggbb.com

CONFIDENTIALITY NOTICE: This communication is intended only for the addressee(s) and may contain confidential and/or privileged information. Any use, disclosure, dissemination, retransmission, distribution or copying of the information in this communication by other than the intended recipient(s) is strictly prohibited. If you received this email in error, please contact the sender, delete the email from all computers and destroy all copies.

 

 

From: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Sent: Wednesday, August 21, 2019 10:19 AM
To: Lourdes Perez <lperez@fggbb.com>; Gary S. Winer <gwiner@fggbb.com>; Paul Bianco <pbianco@fggbb.com>
Cc: tmmiami <tmmiami@fggbb.com>
Subject: Clarification Needed Regarding Application SN 88453033 EMPOWER

 

Hello,

 

I’m the trademark examining attorney assigned to U.S. APPLICATION SERIAL NO. 88453033 EMPOWER.  There’s an issue that I’d like to speak with you about that can be resolved with applicant’s agreement.    Due to Office deadlines, I will need a response from you no later than August 22, 2019.  If I don't hear from you by this time, I will issue an Office action with respect to the relevant issue, to which you will have an opportunity to respond.    

 

Identification of Goods

 

The identification of goods is indefinite and overly broad.  Importantly, the wording “computer programs and computer software” is indefinite and overly broad because it does not make clear that the goods are downloadable, and thus properly classified in Class 09.  I suggest the following, if accurate:

 

Class 09—            Downloadable computer programs and downloadable computer software for providing a content management and collaboration platform for presentation programs, word processing programs, spreadsheet programs and e-mail programs where the programs and software are not related to the teaching or learning of languages;  downloadable computer programs and downloadable computer software for providing productivity tools to enable users to use presentation programs, word processing programs, spreadsheet programs and e-mail programs in less time where the programs and software are not related to the teaching or learning of languages; downloadable computer programs and downloadable computer software for providing brand functionality to enable users to create content on presentation programs, word processing programs, spreadsheet programs and e-mail programs that is aligned with a corporate design where the programs and software are not related to the teaching or learning of languages.

 

Please let me know if applicant agrees to the amendments above.

 

If you have any questions, please contact me.  I will be happy to assist you.

 

Sincerely,

 

Jesse Nelman

Trademark Examining Attorney – Law Office 113

United States Patent & Trademark Office

(571) 272-0191 |  jesse.nelman@uspto.gov

 

All informal e-mail communications relevant to this application will be placed in the official application record.