NOTE TO THE FILE
SERIAL NUMBER: 88506031
DATE: 11/12/2019
NAME: equeen
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:Ms. Queen:
Please amend to Downloadable computer software, hardware, and circuit boards featuring artificial intelligence technology for use in machine learning
Thank you,Michelle Levin
From: Queen, Esther [mailto:Esther.Queen@USPTO.GOV]
Sent: Monday, November 4, 2019 7:16 PM
To: Michelle Levin <levin@leasonellis.com>
Cc: Marty Schwimmer <Schwimmer@leasonellis.com>
Subject: RE: 88506031 BRAINCRAFT
Please choose downloadable. Or choose recorded. The wording “and/or” is not acceptable. In other words, the ID should read:
Downloadable computer software, hardware, and circuit boards featuring artificial intelligence technology for use in machine learning
Or, applicant can replace downloadable above with recorded.
Q Queen
LO 111
Examining Attorney
United States Patent & Trademark Office
571-272-6695
From: Michelle Levin <levin@leasonellis.com>
Sent: Monday, November 4, 2019 12:02 PM
To: Queen, Esther <Esther.Queen@USPTO.GOV>
Cc: Marty Schwimmer <Schwimmer@leasonellis.com>
Subject: RE: 88506031 BRAINCRAFT
Dear Ms. Queen:
We agree to amend the software to indicate that it is downloadable and/or recorded. Please let us know if you need any additional information.
Thank you,
Michelle Levin
From: Queen, Esther [mailto:Esther.Queen@USPTO.GOV]
Sent: Monday, November 4, 2019 11:52 AM
To: TMDocket <TMDocket@leasonellis.com>; Marty Schwimmer <Schwimmer@leasonellis.com>
Subject: 88506031 BRAINCRAFT
Attn: Martin Schwimmer (08001/313367)
The application has been removed from publication. “Computer software … featuring artificial intelligence technology for use in machine learning” is indefinite and overbroad because it does not indicate whether the software is downloadable or recorded, which is required for classification in Cl. 9. Under Nice 11-2019, IDs for computer programs/software in Cl. 9 must (1) indicate the function and, if applicable, the content and/or particular field of use of the goods, AND (2) specify that the goods are “downloadable” and/or “recorded.” See ID/Class Bulletin, Ed. 40. Providing temporary use of on-line non-downloadable software is classified in Class 42, except for provision of online non-downloadable game software which is classified in Class 41.
In other words, to keep the software in class 9, applicant must specify that is downloadable or recorded. If you would like me to make the changes for you (and if applicant is not adding class 42), please let me know by Wednesday, 11/6 so that I can enter the amendment.
Q Queen
LO 111
Examining Attorney
United States Patent & Trademark Office
571-272-6695
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