NOTE TO THE FILE
SERIAL NUMBER: 88488593
DATE: 09/21/2020
NAME: lsabagh
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: Clay LaPoint <clapoint@pirkeybarber.com>
Sent: Monday, September 21, 2020 3:19 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Laila,
I just spoke with my client on the phone, and he has approved the amendment to “unified communications.” My apologies for the delay.
Thank you very much, and I hope all is well.
Clay
Clay LaPoint
Associate
512-334-8507 (direct)From: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Sent: Monday, September 21, 2020 9:52 AM
To: Clay LaPoint <clapoint@pirkeybarber.com>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Clay,
I hope you are well and had a good weekend. I am following up regarding the wording “Unified IP” in the 88488593 and 88488617 applications. Do you have any updates regarding amending the wording “Unified IP” to “unified communications” in those applications?
Sincerely,
Laila Sabagh
Laila Sabagh
Trademark Examining Attorney
Law Office 127, U.S. Patent & Trademark Office
(571) 272-8230
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: Clay LaPoint <clapoint@pirkeybarber.com>
Sent: Tuesday, September 8, 2020 5:24 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Laila,
I hope you had a good weekend, and my apologies for the delay. I’m waiting to hear back from my client on this minor issue. I will get back to you asap.
Thank you,
Clay
Clay LaPoint
Associate
512-334-8507 (direct)From: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Sent: Thursday, September 3, 2020 1:49 PM
To: Clay LaPoint <clapoint@pirkeybarber.com>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Clay,
Thank you for clarifying and providing further information. For application Serial Number 88488617 (Class 42), yes, I removed the wording “Providing an on-line interactive database featuring technology for accessing security information, namely, a publicly accessible databases containing security related data of patients and of physicians” and replaced it with “Providing an on-line interactive database featuring technology for accessing health security information, namely, a publicly accessible databases containing health security related data of patients and of physicians” in the Class 44 application.
The last issue (I hope) is the wording “Unified IP” in the 88488593 and 88488617 applications. If I can get your approval to change the wording “Unified IP” to “unified communications” in those applications, I will make the changes via Examiner’s Amendments.
Sincerely,
Laila Sabagh
Laila Sabagh
Trademark Examining Attorney
Law Office 127, U.S. Patent & Trademark Office
(571) 272-8230
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: Clay LaPoint <clapoint@pirkeybarber.com>
Sent: Wednesday, August 19, 2020 7:21 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Laila,
For ease of reference, I’ve responded in red below.
Thank you very much, and please let me know if you have any other questions. And I hope you had a pleasant time away from the (virtual) office.
Thank you,
Clay
Clay LaPoint
Associate
512-334-8507 (direct)From: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Sent: Wednesday, August 19, 2020 9:59 AM
To: Clay LaPoint <clapoint@pirkeybarber.com>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Clay,
Thank you for your patience while I have worked through these applications. There are few issues I overlooked and a mistake I made, so I apologize for that.
- Serial number 88488593 (Class 35): All amendments are acceptable
- Serial number 88488603 (Class 37): Upon further review, it seems that the original identification “integration of telecommunications and data networking equipment and application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols” in Class 42 (originally included in Serial Number 88488617) is acceptable other than the inclusion of the registered mark “Unified IP” which could be changed to “unified communication”. If the applicant would prefer to add that back to the 88488617 application I can do that. I apologize for this mistake. Yes, we would prefer to keep it in Class 42, and the amendment to unified communication is fine.
Otherwise, if applicant would like to maintain the amended identification in Class 37, further clarification is required for it to be properly classified in Class 37. Applicant may adopt the following, if applicable: “Installation of telecommunications and data networking equipment in the nature of integration of telecommunications and data networking equipment for providing unified communications services across multiple network infrastructures and communication protocols” in Class 37.
- Serial Number 88488617 (Class 42): Amendment request for transfer of identifications from the Class 37, 38, and 45 applications is acceptable.
The wording “Providing an on-line interactive database featuring technology for accessing security information, namely, a publicly accessible databases containing security related data of patients and of physicians” from the Class 44 application is indefinite and overly broad because applicant must clarify the type of “security information”.
The type of security information is health security information, so would it be possible to use your first example below and keep it in Class 44?
For example, “Providing an on-line interactive database featuring technology for accessing health security information, namely, a publicly accessible databases containing health security related data of patients and of physicians” would remain in Class 44. However, “Providing an on-line interactive database featuring technology for accessing data security information, namely, a publicly accessible databases containing data security information of patients and of physicians” would be a Class 42 service.
Regarding the Nebraska corporation listed as the owner in the 88488608 and 88488622 applications, I want to clarify that it is the Nebraska corporation that did not exist at the time of filing those applications, correct?
Correct, the Nebraska corporation did not exist at the time of filing.
Once these issues are resolved, I can make the changes via Examiner’s Amendments. I look forward to hearing from you soon.
Sincerely,
Laila Sabagh
Laila Sabagh
Trademark Examining Attorney
Law Office 127, U.S. Patent & Trademark Office
(571) 272-8230
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: Clay LaPoint <clapoint@pirkeybarber.com>
Sent: Tuesday, August 4, 2020 6:18 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Laila – My apologies for the serial emails (especially while you’re out of the office), but I just wanted to correct one small typo in the chart below. Thank you.
Clay LaPoint
Associate
512-334-8507 (direct)From: Clay LaPoint
Sent: Tuesday, August 4, 2020 2:06 PM
To: 'Sabagh, Laila' <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Laila,
My apologies for the delay. Please see the chart below regarding the specific goods/services that were amended.
App. Ser. No.
Mark
Class
Goods/Services Issue
88/488,593
35
The following was moved from App. Ser. No. 88/488,622 (Class 44) based on the suggestion in the October 2, 2019 office action for that application:
providing employee assistance programs, namely, labor negotiation information services in the nature of counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution
The following was moved from App. Ser. No. 88/488,617 (Class 42) based on the suggestion in the October 2, 2019 office action for that application:
Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare
88/488,603
37
The most recent Office Action alleged that the following amended clause is broader than the scope of the services originally filed, because applicant’s original services were limited to installation, service, maintenance and repair (but not integration) services for specific types of telecommunications and data networking equipment. :
integration of telecommunications and data networking equipment for providing Unified IP Communications services across multiple network infrastructures and communication protocols
The most recent Office Action includes the recommendation to amend this clause to the following:
Installation of telecommunications and data networking equipment in the nature of integration of telecommunications and data networking equipment for providing unified communications services across multiple network infrastructures and communication protocols
However, applicant added the clause due to the suggestion to do so in the Office Action for App. Ser. No. 88/488,617 (Class 42) on October 2, 2019.
88/488,617
42
The following clause was moved per the suggestion in the October 2, 2019 Office Action for the Class 37 application:
computer software installation, service, maintenance and repair service;
The following clause was moved per the suggestion in the October 2, 2019 Office Action for the Class 38 application:
telecommunications services for monitoring the functionality of devices, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network
The following clauses were moved per the suggestion in the October 2, 2019 Office Action for the Class 45 application:
providing security information related to data security emergencies;
providing security information related to data security and the use of corresponding services by customers;
providing security information related to data security and the provision of corresponding services by service providers such as police, fire brigade and civil protection;
The following clause was moved per the suggestion in the October 2, 2019 Office Action for the Class 44 application:
Providing an on-line interactive database featuring technology for accessing security information, namely, a publicly accessible databases containing security related data of patients and of physicians
Additionally, please note that regarding Application Ser. Nos. 88/488,608 and 88/488,622, we inadvertently stated that the applicant was a Nebraska corporation, while for the remaining applications we correctly stated that it is a Delaware corporation. We understand that this is a correctable error pursuant to TMEP 1201.02(c)(7), as no such Delaware corporation exists, and we will prepare the short statement attesting to that fact (per TMEP 1201.02(c)(7) and submit it in an Office Action Response. Due to the number of goods/services issues, I just wanted to make sure you had this email to provide you the opportunity to enter an Examiner’s Amendment if that would make it easier for you.
We also understand that you have determined that “Unified IP” (which appears in certain goods/services descriptions) is ineligible for use in the services description as it is a registered mark. We are verifying that we can delete this and replace it with “unified communications” with our client. I’m sure it’s fine, I just need their signoff.
Thank you, and I hope all is well,
Clay
Clay LaPoint
Associate
512-334-8507 (direct)From: Clay LaPoint
Sent: Friday, July 24, 2020 1:47 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Hi Laila,
Apologies for the delay. I’m fresh off of paternity leave and still trying to figure out working from home with a one month old and two year old. I will circle back to you early next week in an email.
Thank you,
Clay
Clay LaPoint
Associate
512-334-8507 (direct)From: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Sent: Monday, July 20, 2020 4:37 PM
To: Clay LaPoint <clapoint@pirkeybarber.com>
Subject: RE: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Dear Mr. LaPoint,
Thank you for your email. I apologize for the confusion and my mistake. Would you be able to either (a) send me an email specifying the identifications that the applicant would like to have moved between the parallel applications and include serial numbers (just as you have done below) or (b) respond to the Office actions with that same information? It will be best to have the specific identifications with serial numbers on the record to ensure that it is clear that the applicant is moving entries between applications.
Sincerely,
Laila Sabagh
Laila Sabagh
Trademark Examining Attorney
Law Office 127, U.S. Patent & Trademark Office
(571) 272-8230
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: Clay LaPoint <clapoint@pirkeybarber.com>
Sent: Monday, July 13, 2020 6:07 PM
To: Sabagh, Laila <Laila.Sabagh@USPTO.GOV>
Subject: Question re: INTRADO & Design Applications - 88/488,593, 88/488,603, and 88/488,617
Dear Ms. Sabagh,
I hope this email finds you well. I’m an attorney working on behalf of West Corp. and its application Serial Nos. 88/488,593, 88/488,603, and 88/488,617, all for the INTRADO & Design mark. My client is reviewing the Office Actions, but I wanted to write to you regarding certain of the goods/services requests. In short, it appears that the latest round of Office Actions (I believe these were all issued on or around April 9th) involves goods and services that, when amended, are outside the scope of the original ID. However, the amendments we made to the goods/services identifications were made pursuant to your recommendations in the earlier round of Office Actions (from October 2nd, I believe) in which you concluded that certain of the goods/services were misfiled into the wrong classes. Because we filed parallel applications in Classes 9, 35, 36, 37, 38, 41, 42, 44, and 45, we simply moved these goods and services to their parallel applications, per your recommendation.
For example, for App. Ser. No. 88/488,593 (Class 35), we:
· moved the following from App. Ser. No. 88/488,622 (Class 44) based on your suggestion in the October 2, 2019 office action for that application:
providing employee assistance programs, namely, labor negotiation information services in the nature of legal counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution
· moved the following from App. Ser. No. 88/488,617 (Class 42) based on your suggestion in the October 2, 2019 office action for that application:
Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare
Could you please clarify whether these amendments are indeed appropriate as we moved them between parallel applications?
Please let me know if you have any questions. I look forward to hearing from you, and hope you’re staying safe.
Kind regards,
Clay LaPoint
Clay LaPoint
Associate
512-334-8507 (direct)