NOTE TO THE FILE
SERIAL NUMBER: 88555303
DATE: 11/04/2019
NAME: jmccarthy1
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
X Wikipedia
X Acronym Finder Protest evidence reviewed
Other:Checked:
X Geographic significance
X Surname
X Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X 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: Hill, Richard L. (Lehi) <rlhill@djplaw.com>
Sent: Monday, November 4, 2019 1:06 PM
To: McCarthy, Joseph <Joseph.McCarthy@USPTO.GOV>
Cc: Thurman, Ronald <rthurman@djplaw.com>; Rodriguez, Tami <trodriguez@djplaw.com>
Subject: RE: USPTO Correspondence Ser. Nos. 88555303 & 88555068
To Joseph McCarthy, Trademark Examiner, USPTO
Date: November 1, 2019
Email: joseph.mccarthy@uspto.gov
Trademark: QVIEW
Class 9: 88555068
Class 42: 88555303
Regarding your call today to my offices, please take the following actions:
Class 9 – Strike “and the like.”
Class 42 – Add the phrase “provided online” where you indicated
My Bar information:
Number: 1491
Admitted year: 1979
State of Utah
Let me know if anything else is required.
Best regards,
Richard L. Hill
Richard L. Hill | Attorney at Law
Durham Jones & Pinegar, P.C.
3301 N. Thanksgiving Way, Suite 400 | Lehi, UT 84043
Phone: 801.375.6600 | Direct: 801.655.4770 | Fax: 801.375.3865
www.djplaw.com | rlhill@djplaw.com
This e-mail message is for the sole use of the intended recipient(s) and may contain privileged or confidential information. Unauthorized use, distribution, review or disclosure is prohibited. If you are not the intended recipient, please contact rlhill@djplaw.com by reply e-mail and destroy all copies of the original message.
SALT LAKE CITY | LEHI | OGDEN | ST. GEORGEFrom: McCarthy, Joseph [mailto:Joseph.McCarthy@USPTO.GOV]
Sent: Friday, November 01, 2019 8:37 AM
To: Hill, Richard L. (Lehi) <rlhill@djplaw.com>
Cc: Power, Brick G. <bpower@djplaw.com>; Johnson, McKay <mjohnson@djplaw.com>
Subject: FW: USPTO Correspondence Ser. Nos. 88555303 & 88555068
Good morning Attorney Hill, Attorney Power, and Attorney Johnson:
This is a follow-up message to an email sent on Monday October 28 to ipmail@djplaw.com and a voicemail left this morning at approximately 10:30am EST.
I am the examining attorney assigned to the above referenced cases, QVIEW. I have completed my initial examination of the referenced marks and would like to resolve an outstanding issue via an Examiner’s Amendment.
Identification of Services: Class 42
In order for the Identification in U.S. Application No. 88555303 to be definite, we need to add wording in there regarding the services being provided online and on a temporary basis. Further, the open-ended wording “and the like” should be removed. I propose the following amended identification:
International Class 42: Computer forensic software services in the nature of online non-downloadable viewer software for temporary use with forensic software to investigate and analyze data, images and files from computers, mobile devices, and network shares; non-downloadable application service provider featuring online viewer software for temporary use in investigating and analyzing data, images and files from computers, mobile devices, and network shares; software as a service (SAAS) featuring online non-downloadable software for investigating and analyzing data, images and files located on computer hard drives, mobile electronic devices and cellular telephones; providing online non-downloadable software for temporary use with forensic computer software for investigating, searching, examining, analyzing and reporting on data, images and files located on computer hard drives, mobile electronic devices and cellular telephones; software as a service (SAAS) featuring online non-downloadable software for assisting and collaborating with other forensic software in conducting forensic investigations and analyses of data, images and files on electronic devices and networks
Identification of Goods: Class 9
In order for the Identification in U.S. Application No. 88555068 to be definite, we need to remove the reference to “online” in the identification. As with the copending application, the wording “and the like” should also be removed because it is open-ended and renders the identification indefinite. I propose the following amended identification:
International Class 9: Downloadable viewer software for use with forensic software to investigate and analyze data, images and files from computers, mobile devices, and network shares; downloadable software for use in investigating and analyzing data, images and files from computers, mobile devices, and network shares; downloadable viewer software for investigating and analyzing data, images and files located on computer hard drives, mobile electronic devices and cellular telephones; providing downloadable computer software for investigating, searching, examining, analyzing and reporting on data, images and files located on computer hard drives, mobile electronic devices and cellular telephones; downloadable computer software for assisting and collaborating with other forensic software in conducting forensic investigations and analyses of data, images and files on electronic devices and networks
Attorney Information Required
Based on rule changes effective on August 3, 2019, we will need a statement of attestation that Attorney Hill is in good standing with a U.S. State, Commonwealth, or territory bar. We will also need the year & state of admission, and a bar number if it is issued by the jurisdiction.
Please let me know how you wish to proceed with this matter. If you have any questions, please do not hesitate to contact me.
Thank you,
Joe