NOTE TO THE FILE
SERIAL NUMBER: 88472764
DATE: 09/05/2019
NAME: jmiller10
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
X Geographic significance
X Surname
X 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: Gigger, Joshua <josh.gigger@stoel.com>
Sent: Thursday, September 5, 2019 4:43 PM
To: Miller, Justin <Justin.Miller@USPTO.GOV>
Cc: Rhone, Trisha A. <trisha.rhone@stoel.com>; Turner, Rachelle L. <rachelle.turner@stoel.com>
Subject: RE: POTENTIAL EXAMINER'S AMENDMENT, Trademark Application 88472764, CASTELL - Identification of Services
Justin,
Thank you for your email. We propose amending the description as follows:
Software as a service (SaaS) services, namely, hosting software for use by others for population health and value-based care management in the field of healthcare in Class 42.
Please let me know if you’d like to discuss further. If not, please feel free to issue an examiner’s amendment. Thank you.
Josh
Joshua G. Gigger, Partner
STOEL RIVES LLP | 201 S. Main St., Suite 1100 | Salt Lake City, UT 84111-4904
Direct: (801) 428-6311 |Main: (801) 328-3131 Fax: (801) 578-6999
jgigger@stoel.com | www.stoel.com
This email is covered by the Electronic Communications Privacy Act, 18 U.S.C. Section 2510-2521 and is legally privileged. Unauthorized review, use, disclosure or distribution is strictly prohibited. If you are not the intended recipient, please contact the sender at (801-328-3131), or by reply e-mail, and destroy all copies of the original message.
From: Miller, Justin <Justin.Miller@USPTO.GOV>
Sent: Wednesday, September 4, 2019 4:40 PM
To: Trademark, Salt Lake City <TM-SLC@stoel.com>
Subject: POTENTIAL EXAMINER'S AMENDMENT, Trademark Application 88472764, CASTELL - Identification of Services
Good afternoon:
I am the examining attorney in the above referenced trademark application. There is just one issue that requires resolution.
Specifically, the Class 42 identification of services requires amendment to specify the purpose or function of the software. The following wording is suggested and may be adopted, if accurate (examining attorney’s suggestions in bold font):
Class 42: Software as a service (SaaS) services, namely, hosting software for use by others in the field of healthcare for {specify purpose or function of programs, e.g., managing prescriptions, healthcare database management, coordination healthcare services among health providers} in the field of healthcare
The Class 35 and 36 identifications do not require amendment. Upon your authorization and provision of the above information, I would be happy to issue an Examiner’s Amendment to expedite processing of the application. If you have any questions, feel free to email me or call at 571-272-6040. I look forward to your response.
Thank you,
Justin Miller
Examining Attorney
U.S. Patent & Trademark Office
Law Office 125
(571) 272-6040