NOTE TO THE FILE
Sent to TICRS as Serial Number: 88483887SERIAL NUMBER: 88483900
DATE: 09/12/2019
NAME: kdinallo
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:X OTHER:
From: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Sent: Thursday, September 12, 2019 3:08 PM
To: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Subject: RE: USPTO – TM Application for TRIVIE - SN 88483887
Yes to all of the below.
Thanks,
Jeffrey A. Tinker
214-740-1411
From: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Sent: Thursday, September 12, 2019 2:05 PM
To: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Subject: RE: USPTO – TM Application for TRIVIE - SN 88483887
Mr. Tinker, thank you again for your very quick responses. I have to apologize also because I failed to realize the same ID that required the function was also in Class 9. May I go ahead and copy the amended function to the Class 9 software as well? YES
Also, I have reviewed the other two companion applications for the circle design (SN 88483895 for Class 9) and the mark CLOSING THE LOOP ON LEARNING. (SN 88483900 for Classes 9 and 42). The same ID requirements would apply to those as well. Do I have your authorization to amend those IDs accordingly? YES
Lastly, just for your information, the claim of ownership of the prior registrations will be deleted in the companion applications as the marks are entirely different. OK
Thank you again, I will issue the examiner’s amendments shortly after I hear from you.
Best, Kevin
From: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Sent: Thursday, September 12, 2019 2:44 PM
To: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Subject: RE: USPTO – TM Application for TRIVIE - SN 88483887
My apologies, here you go:
“Providing a website featuring online non-downloadable and interactive computer software for on the job training, onboarding, sales, safety, compliance leadership and development and other training initiatives; Providing a website featuring online non-downloadable software that is predictive in nature using artificial intelligence that adapts to each user for providing job training and compliance initiatives
[specify function],” in International Class 42.
Thanks,
Jeffrey A. Tinker
214-740-1411
From: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Sent: Thursday, September 12, 2019 1:37 PM
To: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Subject: RE: USPTO – TM Application for TRIVIE - SN 88483887
Thank you for the quick response. Can you please clarify the function of the software in Class 42?
Thank you. I also have the companion applications and may email you soon on those as well.
Kevin
From: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Sent: Thursday, September 12, 2019 2:36 PM
To: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Subject: RE: USPTO – TM Application for TRIVIE - SN 88483887
These changes are acceptable. Thank you.
Jeffrey A. Tinker
214-740-1411
From: Dinallo, Kevin <Kevin.Dinallo@USPTO.GOV>
Sent: Thursday, September 12, 2019 1:33 PM
To: Jeffrey A. Tinker <jtinker@BELLNUNNALLY.com>
Subject: USPTO – TM Application for TRIVIE - SN 88483887
Hello Mr. Tinker,
I am the examining attorney reviewing this application. I am emailing to obtain your authorization to enter an examiner’s amendment reflecting the following changes to the ID. Effective in 2019, the format of the software must be specified. Also, in Class 42, the purpose or function of the last software service must be specified. I propose the following:
“Downloadable software platform for on the job training, onboarding, sales, safety, compliance leadership and development and other training initiatives; Downloadable software for collecting data, analyzing data and compiling data for use in corporate and educational training programs; Downloadable software that is predictive in nature using artificial intelligence that adapts to each user,” in International Class 9;
“Providing a website featuring online non-downloadable and interactive computer software for on the job training, onboarding, sales, safety, compliance leadership and development and other training initiatives; Providing a website featuring online non-downloadable software that is predictive in nature using artificial intelligence that adapts to each user for [specify function],” in International Class 42.
You may simply reply to this email with your proposed amendments. You also may call me at the number below if you wish to discuss.
If you are unable to submit your authorization at this time, please kindly reply and acknowledge your receipt of this email so that I may proceed accordingly with an Office action.
Thank you and have a good day,
Kevin
Kevin M. Dinallo
United States Patent & Trademark Office
Trademark Examining Attorney
Law Office 107
571-272-9731