NOTE TO THE FILE
SERIAL NUMBER: 88470053
DATE: 04/06/2020
NAME: aelbayeh
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
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: McDonald, Bruce <bmcdonald@sgrlaw.com>
Sent: Monday, April 6, 2020 3:06 PM
To: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Cc: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
Greetings,
The client has authorized the examiner’s amendment. Thanks again for your courtesy.
Regards,
Bruce A. McDonald
Attorney at Law
p | 202-263-4362
f | 202-263-4372
e | bmcdonald@sgrlaw.com
1055 Thomas Jefferson Street, NW | Suite 400 | Washington, DC 20007
www.sgrlaw.com | My Bio | vCard
From: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Sent: Monday, April 6, 2020 11:12 AM
To: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
That is fine, I will wait until Wednesday to take further action. I appreciate your prompt response.
__________________________________
Alexandra El-Bayeh
Examining Attorney, Law Office 124
United States Patent and Trademark Office
(571) 270-5911
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05
From: McDonald, Bruce <bmcdonald@sgrlaw.com>
Sent: Monday, April 6, 2020 11:09 AM
To: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Cc: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
I just sent an email to them – they are in the UK. You have already been very courteous to contact me with the possibility of an examiner’s amendment and I do not want to place any further demands on your time. If I may suggest that we give them until tomorrow to respond, that would be great, but only if that is not unduly inconvenient from your standpoint.
Thank you again for your time and consideration.
Bruce A. McDonald
Attorney at Law
p | 202-263-4362
f | 202-263-4372
e | bmcdonald@sgrlaw.com
1055 Thomas Jefferson Street, NW | Suite 400 | Washington, DC 20007
www.sgrlaw.com | My Bio | vCard
From: McDonald, Bruce <bmcdonald@sgrlaw.com>
Sent: Monday, April 6, 2020 11:00 AM
To: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Cc: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
I will contact them right now to remind them – give me a couple of hours if that is okay.
Thanks,
Bruce A. McDonald
Attorney at Law
p | 202-263-4362
f | 202-263-4372
e | bmcdonald@sgrlaw.com
1055 Thomas Jefferson Street, NW | Suite 400 | Washington, DC 20007
www.sgrlaw.com | My Bio | vCard
From: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Sent: Monday, April 6, 2020 10:57 AM
To: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
Dear Bruce McDonald,
I am just checking in to see if you have any update on the proposed amendments. If you need additional time please let me know, otherwise I will need to send an action in the next few days.
From: McDonald, Bruce <bmcdonald@sgrlaw.com>
Sent: Tuesday, March 31, 2020 1:52 PM
To: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Cc: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: RE: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
Received with thanks, I will find out and respond promptly.
Best regards,
Bruce A. McDonald
Attorney at Law
p | 202-263-4362
f | 202-263-4372
e | bmcdonald@sgrlaw.com
1055 Thomas Jefferson Street, NW | Suite 400 | Washington, DC 20007
www.sgrlaw.com | My Bio | vCard
From: El-Bayeh, Alexandra <Alexandra.El-Bayeh@USPTO.GOV>
Sent: Tuesday, March 31, 2020 12:02 PM
To: McDonald, Bruce <bmcdonald@sgrlaw.com>
Subject: Proposed Amendments for Trademark Application 88470053 (AFFINITY)
CAUTION: This email is from an external source. Do not click links or attachments unless it's from a verified sender.
Dear Attorney Bruce McDonald,
I have reviewed your response on the above-mentioned case. In the response, you note that the applicant would potentially prefer to alter identification of goods and services to avoid further refusal if possible. After reviewing the response, I believe that the following amendments are necessary in order to avoid further refusal. If these are amendable to you, please let me know and I can make the changes via examiner’s amendment, otherwise I can issue a new refusal outlining these items.
The bold and single strike through items are issues only as regards to identification. The items with double strike through are of concern regarding the partial 2d refusal.
I have also added some additional amendments in red to keep the identification within scope of the foreign registration. If you would like to discuss anything further or prefer I send a new action please let me know as soon as possible.
Class 16: Printed publications, namely, magazines and newsletters featuring articles and news in the field of computer software, hardware and peripherals,
graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; manuals, catalogues, books, teaching and instructional materials in the field of computer software, hardware and peripherals,graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; graphic art reproductions; stationery, photo albums, scrapbooks, greeting cards, note cards, and calendars; none of the aforesaid goods for use in relation to dating and social introductions services
Class 35: Providing an on-line directory information service featuring information regarding
social networking, classified ads,general interest, scrapbooking, graphic design and multimedia manipulation and sharing; providing an on-line computer database featuring classified advertisements; advertising by transmission of on-line publicity for third parties through electronic communications networks;graphic advertising;promoting the goods and services of others over the Internet; electronic retail store services featuring computer software, images, multimedia files, digital accessories and scrapbooking materials; none of the aforesaid goods for use in relation to dating and social introductions services
Class 38: Providing online communications links which transfer the web site user to other local and global web pages; internet access provider services;
online and transmission services, namely, providing e-mail services being electronic transmission of secure e-mail, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks;on-line document delivery via a global computer network; providing access to databases featuring information regarding computer software, hardware and peripherals,graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking, magazines, books, manuals and catalogues; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing on-line forums for transmission of messages among computer users in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; none of the aforesaid services for use in relation to dating and social introductions services
Class 41: Teaching, training, education and instructional services, namely, providing on-line courses in the fields of computer software and hardware; arranging and conducting courses, conferences, seminars and educational presentations relating to computer software and hardware; electronic publishing of works of others incorporating user-created text, audio or images on-line featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; on-line journals, namely, blogs featuring computer software, hardware and peripherals,
graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing non-downloadable, on-line newsletters in the fields of computer software, hardware and peripherals,graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking;providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals;providing an on-line computer database featuring information regarding how to set up and use and online scrapbook;providing an on-line computer database featuring educational information regarding how to scrapbook; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing;providing on-line information in the field of current event news and entertainment via the Internet; providing on-line non-downloadable magazines, books, manuals, scrapbooks and catalogues in the fields of computer software, hardware and peripherals,graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing online scrapbooks featuring user-defined text and images; arranging and conducting online meetings and interactive seminars in the field of computer software, hardware and peripherals,graphic design, multimedia manipulation and sharing,the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; none of the aforesaid services for use in relation to dating and social introductions services
Class 42: Advisory services and consultancy relating to computer software; computer software design, development, configuration, maintenance, installation and updating;
computer graphics design services;design of graphics software systems; technical support services, namely, troubleshooting of computer software problems;creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums;providing temporary use of online, non-downloadable software for use for graphic design, image manipulation, desktop publishing and printing; design and development of computer hardware;consulting in the field of website design, development, maintenance, updating, modification, installation and monitoring the performance, availability and errors of the websites of others;consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; installation of software used to create websites;computer aided graphic design; graphic art design;hosting of digital content on the internet, namely, personal profiles and social networking information; providing an interactive website featuring technology that allows users to create, manipulate and share multimedia scrapbooks, information, comments and user-generated multimedia content; providing temporary use of online, non-downloadable software for use for graphic design, multi-media manipulation, scrapbook applications, social networking, uploading, storing, posting, blogging and sharing of communication or information; providing temporary use of online, non-downloadable software that enables users to share multimedia scrapbooks and other user-generated multimedia content with third parties via a global computer network; providing temporary use of on-line non-downloadable software fordesktop publishing,word processing, printing, creating graphics, images, and fonts, font management, typesetting, document management and manipulation, presentation delivery, image editing, media and photo management, drawing, animation, creating graphics,website design,digital video and audio editing;hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking;providing an on-line computer database featuring information regarding the design and development of computer software, hardware and peripherals;design and graphic arts design for the creation of websites and web pages on the Internet;rendering of computer graphics being electronic imaging services;software as a service services featuring software platforms for graphic design; providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring educational information regarding how to scrapbook;providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing;electronic monitoring services, namely, computer security services for protecting data and information from unauthorized access data for security purposes in the field of on-line chat forums; none of the aforesaid services for use in relation to dating and social introductions services
Class 45: [this class should be deleted because the remaining wording is outside the scope of the foreign registration]
__________________________________
Alexandra El-Bayeh
Examining Attorney, Law Office 124
United States Patent and Trademark Office
(571) 270-5911
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05
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This message is being sent by or on behalf of a lawyer. It is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged or confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.
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This message is being sent by or on behalf of a lawyer. It is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged or confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.