NOTE TO THE FILE
SERIAL NUMBER: 88459205
DATE: 04/02/2020
NAME: aportaro
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:
X 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: George B. F. Yee <gyee@fountainheadlaw.com>
Sent: Thursday, April 2, 2020 1:41 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Cc: Velma Hernandez <vhernandez@fountainheadlaw.com>; George B. F. Yee <gyee@fountainheadlaw.com>
Subject: RE: Urgent Response Requested U.S. Trademark Application Serial Number: 88459205
Dear Examining Attorney Portaro,
Thank you for your email. Per our call, please proceed with an examiner’s amendment as you proposed.
Thank you,
George.
From: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Sent: Thursday, April 2, 2020 10:34 AM
To: George B. F. Yee <gyee@fountainheadlaw.com>
Cc: Velma Hernandez <vhernandez@fountainheadlaw.com>
Subject: Urgent Response Requested U.S. Trademark Application Serial Number: 88459205
Good afternoon Mr. Yee,
We spoke a few months ago regarding the above referenced application. I reviewed your response to the Office action and there is still an issue with the identification that overlaps with the identification in the cited registration. Specifically, the function of the software of providing “access to enterprise data”. Please let me know if you would like to remove the wording from the identification.
The identification would read (deleted language with a
strikethrough):
International Class 9: Downloadable software programs and application software for mobile devices, computers, laptops, and tablets, namely, downloadable computer software using machine learning and artificial intelligence for use providing
access,integration and analysis of enterprise data; Downloadable software programs and application software for mobile devices, computers, laptops, and tablets, namely, downloadable computer software using machine learning and artificial intelligence to enable interoperation among various computing systems and data storage systems in an enterprise
International Class 42: Software as a service (SAAS) services featuring software to facilitate
access to enterprise data, andintegration and analysis of enterprise data; Software as a service (SAAS) services featuring software to enable interoperation between an autonomous program (bot) and computer systems in an enterprise
Please let me know if you approve of my amending the identification as described.
Please respond no later than 2 PM EST on Friday, April 3, 2020.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
/Alexandra Portaro/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
571-270-3924
From: George B. F. Yee <gyee@fountainheadlaw.com>
Sent: Tuesday, January 14, 2020 5:46 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Cc: George B. F. Yee <gyee@fountainheadlaw.com>
Subject: RE: TM US Serial Number: 88459205 - request for telephone interview
Thank you. We’ll talk then.
From: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Sent: Tuesday, January 14, 2020 2:38 PM
To: George B. F. Yee <gyee@fountainheadlaw.com>
Subject: RE: TM US Serial Number: 88459205 - request for telephone interview
Hi George,
Friday at 11am works for me. Look forward to your call.
Thank you,
/Alexandra Portaro/
Trademark Examining Attorney
Law Office 126
(571)-270-3924
From: George B. F. Yee <gyee@fountainheadlaw.com>
Sent: Tuesday, January 14, 2020 5:19 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Cc: George B. F. Yee <gyee@fountainheadlaw.com>
Subject: TM US Serial Number: 88459205 - request for telephone interview
Dear Examining Attorney Portaro,
I would like to request a telephone interview to discuss how we might overcome the likelihood of confusion rejection of the above-referenced TM application.
I propose this Friday (Jan 17), 11am (EST).
Please advise if this is an acceptable time to call.
Thank you,
George.
George Yee
Fountainhead Law Group, P.C.
900 Lafayette St., Ste. 301
Santa Clara, CA 95050
Direct: 408.260.8172
Fax: 408.516.5926