NOTE TO THE FILE
SERIAL NUMBER: 88518993
DATE: 10/08/2019
NAME: kfoss
NOTE:
From: Phil Kim <pkim@ipla.com>
Sent: Monday, October 7, 2019 4:51 PM
To: Foss, Katherine <Katherine.Foss@USPTO.GOV>
Cc: Team - JDA <jda@ipla.com>
Subject: RE:USPTO Correspondence 88518993 / FRESHCHAIN
JDA: TM/FRESHCHAIN (US) - 09, 42 (Ser 88518993) - Examiner's Amendment
Hi Ms. Foss,
Our client, JDA Software Group, Inc., would like to proceed with an Examiner’s Amendment for Application No. 88518993 as amended below:
Class 9: “Downloadable computer software for managing supply and demand chains in the retail, grocery, wholesale distribution, manufacturing, travel, transportation, hospitality and media industries; Downloadable computer software for managing and planning operations, resource allocation, inventory, customers, customer service, pricing and revenue; Downloadable computer software used for managing production, scheduling, and transportation and shipping logistics; Downloadable computer software used for managing, mining, analyzing and reporting business data, verifying prices, ordering inventory, and operating retail stores and warehouses; Downloadable computer software used to access and transmit retailer and supplier product data via a global computer network”;
Class 42: “Software as a service (SAAS) services, namely, hosting software for use by others for use for managing supply and demand chains in the retail, grocery, wholesale distribution, manufacturing, travel, transportation, hospitality and media industries; Software as a service (SAAS) services, namely, hosting software for use by others for managing and planning operations, resource allocation, inventory, customers, customer service, pricing and revenue; Software as a service (SAAS) services, namely, hosting software for use by others for managing production, scheduling, and transportation and shipping logistics; Software as a service (SAAS) services, namely, hosting software for use by others for managing, mining, analyzing and reporting business data, verifying prices, ordering inventory, and operating retail stores and warehouses; Software as a service (SAAS) services, namely, hosting software for use by others to access and transmit retailer and supplier product data via a global computer network”
Please let us know if you require any further information. Otherwise, kindly confirm receipt of our response.
Sincerely,
Phillip L. Kim
Associate
I|P|L|A
4445 Eastgate Mall, Suite 200, San Diego, CA 92121P: (858) 272-0220 ext. 131 | C: (442) 232-0126
This email is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
From: Foss, Katherine <Katherine.Foss@USPTO.GOV>
Sent: Thursday, October 3, 2019 3:22 PM
To: Trademarks <trademarks@ipla.com>
Subject: USPTO Correspondence 88518993 / FRESHCHAIN
Dear Mr. Kim,
I am the examining attorney assigned to the trademark application referenced in the subject line. There is a small issue with the identification of goods in Class 9 which may be resolved via Examiner’s Amendment. Specifically, software in Class 9 must state that it is “downloadable” or “recorded” in nature. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The following is suggested, if accurate (additions in bold, deletions in
strikethrough):
Class 9: “Dowloadable computer software for managing supply and demand chains in the retail, grocery, wholesale distribution, manufacturing, travel, transportation, hospitality and media industries; Dowloadable computer software for managing and planning operations, resource allocation, inventory, customers, customer service, pricing and revenue; Dowloadable computer software used for managing production, scheduling, and transportation and shipping logistics; Dowloadable computer software used for managing, mining, analyzing and reporting business data, verifying prices, ordering inventory, and operating retail stores and warehouses; Dowloadable computer software used to access and transmit retailer and supplier product data via a global computer network”;
Class 42: “Software as a service (SAAS) services, namely, hosting software for use by others for use for managing supply and demand chains in the retail, grocery, wholesale distribution, manufacturing, travel, transportation, hospitality and media industries; Software as a service (SAAS) services, namely, hosting software for use by others for managing and planning operations, resource allocation, inventory, customers, customer service, pricing and revenue; Software as a service (SAAS) services, namely, hosting software for use by others for managing production, scheduling, and transportation and shipping logistics; Software as a service (SAAS) services, namely, hosting software for use by others for managing, mining, analyzing and reporting business data, verifying prices, ordering inventory, and operating retail stores and warehouses; Software as a service (SAAS) services, namely, hosting software for use by others to access and transmit retailer and supplier product data via a global computer network”
Thank you in advance for your time. If I do not hear from you by close of business on Thursday, October 10, 2019, or if we cannot reach a resolution by that date, I will issue formal Office Actions. I am happy to discuss further or answer any questions you may have.
Kind regards,
Katie Foss
Katie Foss
Trademark Examining Attorney | Law Office 125
571-272-4067 | katherine.foss@uspto.gov
Notice to applicants and attorneys: 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