NOTE TO THE FILE
SERIAL NUMBER: 88473323
DATE: 11/12/2019
NAME: mwinter
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:Dear Examiner Winter,
The client has decided that YES, the changes that you propose are acceptable. Please proceed with your Examiner’s Amendment.
And thank you for your patience and help in this case.
John Thomas
John H. Thomas, P.C.
536 Granite Avenue
Richmond, Virginia 23226
(804) 344-8130 Phone
From: Winter, Melissa <Melissa.Winter@USPTO.GOV>
Sent: Wednesday, November 06, 2019 12:16 PM
To: John Thomas <JThomas@IP-Counsel.net>
Subject: RE: Trademark Application SN 88473323, COMMSCOPE
Thank you for letting me know. I can wait a bit before I have to send an action, so if you can get back to me early next week, that’s fine.
Also, I realized in reading over the below, there is a typo in my suggestion for Class 9. Rather than “electric apparatus”, I meant to type “electronic apparatus”. It’s a minor difference but sometimes “electric” versus “electronic”/“electrical” affects classification. So I propose “electronic apparatus for monitoring, measuring, testing and controlling electrical signals” to make sure we’ve got it firmly in Class 9.
Please let me know if you have questions. If you aren’t able to get back to me by the close of business on Tuesday, I will need to send an action but if we can resolve the issues via Examiner’s Amendment without the need for another action, that would be most efficient for all!
/Melissa S. Winter/
Trademark Examining Attorney
Law Office 122
United States Patent and Trademark Office
PH: 571-272-7913
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: John Thomas <JThomas@IP-Counsel.net>
Sent: Wednesday, November 6, 2019 11:49 AM
To: Winter, Melissa <Melissa.Winter@USPTO.GOV>
Subject: RE: Trademark Application SN 88473323, COMMSCOPE
Dear Ms. Winter,
Thank you for this communication. This is the most important trademark of our client CommScope, so I have to get a few layers of approval from them. They are having a meeting next Monday. I am not sure what time. We have to wait until then to get final approval. I do not expect any problems, but I just cannot say yes until I hear back after that meeting.
If you need to issue an action this Friday, then I understand. But I will let you know early next week.
Thank you.
John Thomas
John H. Thomas, P.C.
536 Granite Avenue
Richmond, Virginia 23226
(804) 344-8130 Phone
From: Winter, Melissa <Melissa.Winter@USPTO.GOV>
Sent: Sunday, November 03, 2019 4:51 PM
To: John Thomas <JThomas@IP-Counsel.net>; Jackie Barefoot <JBarefoot@IP-Counsel.net>; jhtpc office <jhtpcoffice@ip-counsel.net>
Subject: Trademark Application SN 88473323, COMMSCOPE
Dear Mr. Thomas,
Good afternoon. I have reviewed the response to the Office action and there are a few amendments that must still be made to the identification before I can approve the application for publication. I know this is a bit lengthy but there aren’t too many issues given the length of the original ID, and we can resolve the issues by Examiner’s Amendment if applicant is amenable.
- Class 8
To ensure that applicant’s hand tools are properly classified in Class 8, the identification should indicate that the goods are hand-operated, not simply hand-held, as some hand tools could be classified in other classes depending on whether they are hand-operated or merely hand-held.
Thus, I propose the following ID for Class 8 (proposed amendment in bold):
Class 8: Network infrastructure installation tools, namely, cable preparation tools for preparing telecommunication cables for connector attachment in the nature of hand-operated tools for stripping and crimping telecommunication cables; fiber installation tools and accessories, namely, hand-operated tools for splicing, terminating and connecting fiber optic cables and connectors; raceway installation tools, namely, hand-operated tools for drilling, cutting and connecting telecommunication cable management raceways; wireless installation hand tools, namely, hand-operated tools for stripping and crimping network and telecommunication cables; Cable termination and cable connection tools, namely, hand-operated tools for cutting, stripping, terminating, crimping and connecting telecommunication cables; manual hoists, namely, hoisting grips for telecommunications cables and metal support clamps
- Class 9
In Class 9, the following entry must be further amended because “software” is overbroad; to remain in Class 9, applicant must specify downloadable or recorded: “communications systems equipment, namely, for voice, data, and video utilized in the cable television, telephone, and power industries in the nature of electronic communications systems comprised of computer hardware and software for the transmission of data between two points.” If the software is downloadable, I propose the following: “communications systems equipment, namely, for voice, data, and video utilized in the cable television, telephone, and power industries in the nature of electronic communications systems comprised of computer hardware and downloadable software for the transmission of data between two points”
Additionally, there are now duplicate entries in the ID for “downloadable computer software for networking and wireless applications.” One may be amended or deleted; please let me know which route applicant would like to take.
Finally, “apparatus for monitoring, measuring, testing and controlling electrical signals” is indefinite. While “apparatus for controlling electrical signals” is acceptable, the issue is with the other wording, “monitoring, measuring, testing”, which generally requires additional specificity as to the type of apparatus. I think amending to “electric apparatus for monitoring, measuring, testing and controlling electrical signals” would be acceptable if applicant agrees.
- Class 35
As noted in the Office action, the wording “Computer software for networking and wireless applications” in the Class 35 identification is misclassified. It appears that the applicant adopted wording in Classes 9 and 42 to cover it, but this wording was not deleted from Class 35 in the response.
- Class 42
There are duplicate entries in the ID for “providing online nondownloadable computer software for networking and wireless applications.” One may be amended or deleted; please let me know which route applicant would like to take.
Please let me know how applicant would like to proceed. I would appreciate a response as soon as possible but not later than the close of business on Thursday, November 7.
If you have any questions, please feel free to contact me.
Sincerely,
/Melissa S. Winter/
Trademark Examining Attorney
Law Office 122
United States Patent and Trademark Office
PH: 571-272-7913
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.