Notation to File

NOTE TO THE FILE

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SERIAL NUMBER:            88497199

DATE:                                09/24/2019

NAME:                               mwinter

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

Dear Ms. Winter,

 

The proposed modification of goods and services is acceptable, and you may enter them by an Examiner’s Amendment.

 

Regards,

 

Kevin Bovard Partner
Cira Centre 2929 Arch Street | 12th Floor Philadelphia, PA 19104-2891 T +1.215.564.2727 kbovard@bakerlaw.com bakerlaw.com

 

 

 

 

 

From: Winter, Melissa <Melissa.Winter@USPTO.GOV>
Sent: Sunday, September 22, 2019 3:27 PM
To: BH IP Docket <bhipdocket@bakerlaw.com>; Bovard, Kevin M. <KBovard@bakerlaw.com>; Barr, JoMary <jmbarr@bakerlaw.com>
Subject: Trademark Application SNs 88496035 (ICDD) and 88497199 (PDF)

 

Dear Mr. Bovard,

 

Good afternoon.  I am the trademark examining attorney reviewing SNs 88496035 (ICDD) and 88497199 (PDF).

 

In both applications, the identification of goods and services must be amended.  Specifically, in Class 9, the wording “Computer software for scientific analysis in the fields of high energy diffraction and powder diffraction” is overbroad because it does not specify whether the software is downloadable/recorded in Class 9 or online nondownloadable in Class 42.  Additionally, the Class 42 identification must be amended to clarify the nature of the services, and in the case of the online database, the purpose of the services.  Based on the specimen and applicant’s website, I suggest the following amended identification:

 

Class 9: Recorded computer software for scientific analysis in the fields of high energy diffraction and powder diffraction; Electronic databases featuring scientific information, recorded on computer media

 

Class 42: Software as a service (SAAS) services featuring software for analysis in the fields of high energy diffraction and powder diffraction; providing an online database in the fields of high energy diffraction and powder diffraction for scientific research purposes        

 

These suggestions apply to both applications.  If the applicant agrees, I can issue an Examiner’s Amendment to make the changes to each application.  SN 88496035, ICDD, should then be in condition for publication. 

 

However, SN 88497199, PDF, must be suspended for a prior-filed application, SN 88108465, SMARTPDF.  The problem is the prior-filed application includes the extremely broad wording “computer software”, without specification as to the subject matter.  Once that applicant specifies a subject matter, it’s entirely possible that there will be no conflict; however, I cannot make that assessment until the prior application is amended.  So if applicant agrees to the ID amendments, I will issue an Examiner’s Amendment and then a suspension notice. 

 

Please let me know as soon as possible if applicant agrees to the above ID amendments.  I would appreciate a response no later than the close of business on Wednesday, September 25. 

 

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

Melissa.winter@uspto.gov

 

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.

 

 

 

 

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         Sent to TICRS as Serial Number: 88496035