Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88520897

DATE:                                05/04/2020

NAME:                               jburke3

NOTE:         

Searched:                                                             
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     Acronym Finder                         Protest evidence reviewed
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Checked:                                                             
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Discussed file with
Attorney/Applicant via:
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    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
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     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

     OTHER:

Ms. Burke:

 

Your proposed amendments are acceptable, except in Class 45, where we wish to add a reference to “manufacturing sites.”  The amended Class 45 wording would read: 

 

Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, all rendered in business establishments, office buildings, manufacturing sites, hotels, residential complexes and homes 

 

Please proceed with an examiner’s amendment.  If there are any other issues, please let me know.  Thank you.

 

/Timothy H. Hiebert/

Attorney for Applicant

 

 

From: Burke, Justine [mailto:Justine.Burke@USPTO.GOV]
Sent: Monday, May 04, 2020 9:05 AM
To: Tim Hiebert
Subject: RE: Regarding Trademark App. Ser. No. 88520897 "WANDO" and design

 

Good morning,

 

I wanted to follow up on this message— have you been able to get in contact with your client about the requirement(s) outlined below?

 

Please contact me at your earliest convenience. I look forward to speaking with you soon.

 

 

Thanks,

 

Ms. Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

justine.burke@uspto.gov

 

From: Burke, Justine
Sent: Monday, April 27, 2020 3:58 PM
To: hiebert@samuelsTM.com
Subject: Regarding Trademark App. Ser. No. 88520897 "WANDO" and design

 

Good afternoon,

 

My name is Justine Burke and I am the examining attorney to whom the above referenced application(s) has/have been assigned. Upon review of response dated April 6, 2020, the requirement to amend the identification of goods and services remains outstanding.

 

Class 9

Downloadable computer software applications for making online service requests for installation, maintenance, repair and adjustment of air conditioning and heating equipment, lighting fixtures and coffee and vending machines, and for making online service requests for repair and maintenance of building interiors, all for business and commercial use;

·        Must amend to clarify what goods the software applications are for

 

Downloadable applications for mobile telephones for making online service requests for installation, maintenance, repair and adjustment of air conditioning and heating equipment, lighting fixtures and coffee and vending machines, and for making online service requests for repair and maintenance of building interiors, all for business and commercial use;

·        Must amend to clarify nature/type of applications

 

Class 35

Presentation of goods on communication media for retail sale, namely, providing online shopping services by means of a software application, in the field of food, chocolates, beverages, hygienic products, cosmetic products, flowers

·        Must amend to make clear the underlying nature of the services provided

 

Class 45

Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs

·        Must amend to clarify the nature of the services being provided

 

If accepted, the following will be added to the record  (proposed amendments highlighted—all other classes to remain unchanged):

 

IDENTIFICATION AMENDMENT

 

The identification of goods and services is amended to read as follows:

 

Class 9: Downloadable computer software applications for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for making online service requests for installation, maintenance, repair and adjustment of air conditioning and heating equipment, lighting fixtures and coffee and vending machines, and for making online service requests for repair and maintenance of building interiors, all for business and commercial use; Downloadable software applications for mobile telephones for making online service requests for installation, maintenance, repair and adjustment of air conditioning and heating equipment, lighting fixtures and coffee and vending machines, and for making online service requests for repair and maintenance of building interiors, all for business and commercial use; Downloadable computer software and downloadable software applications for mobile phones, both of the foregoing for online booking of restaurants and catering services; Downloadable computer software and downloadable software applications for mobile phones for online requesting of repair of office apparatus and installation of office apparatus, namely computers, telephones, facsimile machines and photocopiers; Downloadable computer software and downloadable software applications for mobile phones for requesting emergency action for security issues; Downloadable computer software and downloadable software applications for mobile phones for requesting emergency action for sanitary issues; Downloadable computer software and downloadable software applications for mobile phones for commercial intermediation services, namely for making requests for pressing clothing for others, for booking transportation for others, for booking of seats for shows, for booking of tickets for cultural and entertainment centers, for booking of meeting rooms, for booking of massages and beauty care appointments, for booking tickets to sporting events, for arranging flower delivery for others and for requesting appointments with health care providers; Downloadable computer software and downloadable software applications for mobile phones for providing secure payment for commercial transactions; Downloadable computer software and downloadable software applications for mobile phones for issuing promotional vouchers

 

Class 35: Commercial intermediation services, namely, providing a website for connecting sellers with buyers; sales promotion for others; Presentation of goods on communication media for retail sale, namely, providing online shopping services in the nature of providing online retail store services featuring food, chocolates, beverages, hygienic products, cosmetic products, flowers accessible by means of a software application; Organization and management of customer loyalty business operations, namely, business administration of consumer loyalty programs; Issuing of promotional vouchers, namely, promoting the goods of others by providing vouchers for the goods of others

 

Class 36: Financial transaction services, namely, providing secure commercial transactions and payment options; Issuing of vouchers of cash value for the payment of goods and services of others; Financial transaction services, namely, providing secure payment options online; providing financial information through websites and mobile applications

 

Class 37: Repair of air conditioning apparatus; repair of air cooling apparatus; repair of elevators; repair of escalators; Vehicle breakdown assistance, namely, vehicle repair; repair of boilers; repair of heating apparatus; Repair and interference suppression services for electrical apparatus; repair of food and beverage distribution apparatus; repair of ovens; repair of kitchen equipment; repair of refrigerating apparatus; repair of locks; repair of fire alarm devices; repair and maintenance of fire-extinguishing apparatus; repair of burglar alarms; repair of security systems; furniture restoration; repair of gas and water installations; repair of power generation apparatus and installations; repair of computer networks and telecommunication networks; repair of telecommunication apparatus; repair of computers; repair of computer hardware; repair of telephones; repair of telephone cables; repair of facsimile machines; installation of air-conditioning apparatus; installation of elevators; installation of escalators; boiler installation; installation of heating apparatus; installation of food and beverage distribution apparatus; installation of kitchen equipment; installation of fire alarm devices; installation of fire extinguishers apparatus; installation of burglar alarms; installation of security systems; installation of supplying gas and water apparatus and equipment; installation of energy production apparatus and devices; installation of computer and telecommunication networks; installation of telecommunication apparatus; installation of computers; installation of computer hardware; installation of telephones; installation of telephone cables; installation of facsimile machines; installation of office furniture; maintenance and cleaning of buildings; window cleaning; cleaning of building exteriors; disinfecting; rat exterminating other than for agriculture, aquaculture, forestry and horticulture; vehicle maintenance; vehicle cleaning; vehicle washing; cleaning of clothing; laundering

 

Class 39: Delivery of goods; delivery of flowers

 

Class 43: Online booking of catering services; Restaurant information services, namely, providing online information relating to menus offered in restaurants and company restaurants; services for providing food and drink; hotel services; rental of meeting rooms; providing of and reservation of temporary accommodations, namely, temporary provision of offices, meeting rooms, exhibition rooms, seminar rooms and conference rooms

 

Class 45: Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes

 

See TMEP §§1402.01, 1402.01(e).

 

 

Kindly advise whether this/these requirement(s) is/are agreeable to you. Please do not hesitate to contact me should you have any further questions. Please get back to me by Thursday, May 7, 2020 at 12:00 PM EST if possible because I’ll have to get an office action out on this matter by that time. If you hear back from your client after an Office action issues, though, you can of course still contact me for an Examiner’s Amendment, and we take care of this over the phone or via email.

 

 

Thanks,

 

Ms. Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

justine.burke@uspto.gov