NOTE TO THE FILE
SERIAL NUMBER: 88474418
DATE: 03/19/2020
NAME: hgilbert
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: Jason T. Daniel, ESQ. <Jason@danielpatents.com>
Sent: Thursday, March 19, 2020 10:11 AM
To: Gilbert, Hannah <Hannah.Gilbert@USPTO.GOV>
Subject: RE: RESPONSE REQUESTED - US Trademark Application Serial No. 88474418 (Your Docket No. 190601-2-TM)
Hi Hannah,
No problem. If you could please enter an examiners amendment for this description, it would be greatly appreciated.
Providing online portals featuring consumer preference information in the field of consumer-to-business commerce
for consumers to enter, manage and modify their consumer preference informationfor use by merchants to create and manage offers for delivery to consumers”
Thank you,
Jason T. Daniel, Esq.
407.841.8375
From: Gilbert, Hannah [mailto:Hannah.Gilbert@USPTO.GOV]
Sent: Wednesday, March 18, 2020 10:46 PM
To: Jason T. Daniel, ESQ. <Jason@danielpatents.com>
Subject: RESPONSE REQUESTED - US Trademark Application Serial No. 88474418 (Your Docket No. 190601-2-TM)
Hi Jason,
I’ve reviewed the response filed 2/25/20 and there’s one more issue with the identification of services in the above-referenced application, which I’m happy to enter by examiner’s amendment. My apologies for not catching this earlier.
The wording “Providing online portals featuring consumer preference information in the field of consumer-to-business commerce for consumers to enter, manage and modify their consumer preference information for use by merchants to create and manage offers for delivery to consumers” in Class 35 is still overbroad because although it is now clear the portal features consumer information, a Class 35 service, it seems to also feature a technology for consumers to enter, manage and modify data, a Class 42 service.
In Class 35, the following wording would be acceptable:
“Providing online portals featuring consumer preference information in the field of consumer-to-business commerce
for consumers to enter, manage and modify their consumer preference informationfor use by merchants to create and manage offers for delivery to consumers”
Or
“Providing online portals featuring consumer preference information in the field of consumer-to-business commerce provided by consumers for use by merchants to create and manage offers for delivery to consumers”
Please let me know how applicant would like to proceed as soon as possible. If applicant prefers a formal Office action, please let me know right away.
Don’t hesitate to call with any questions. We’ve been having some connectivity issues this week, so if I don’t answer, I’ll get back to you as soon as I can.
Kind regards,
Hannah
Hannah B. Gilbert
JD, MBA
Trademark Examining Attorney
Law Office 121
United States Patent and Trademark Office
(571) 272-5029
Please be advised that all 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.