NOTE TO THE FILE
SERIAL NUMBER: 88580963
DATE: 11/19/2019
NAME: jsalcido
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:John,
Please go ahead and make the changes.
Thank you so much!
DLH
On November 18, 2019 at 5:34 PM "Salcido, John" <John.Salcido@USPTO.GOV> wrote:
Dear Mr. Hoyt,
I am the Trademark Examining Attorney that has been assigned your case at the U.S. Trademark Office.
There are only a few issues that we can fix via email or over the phone that are preventing approval of this application for the next step of the registration process. With your OK I can make the changes proposed below and move the application forward.
Disclaimer Required
Applicant must insert a disclaimer of “WORD SEARCH” in the application because the terms merely describes a feature of the goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “WORD SEARCH” apart from the mark as shown.
TMEP §1213.08(a)(i).
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
Identification of Goods
A part of the identification of goods and/or services is indefinite and must be clarified. Specifically, the identification must specify whether the software is downloadable or recorded.
You may adopt the following language to correct this problem (changes are indicated in bold):
Downloadable computer application software for mobile phones, handheld computers, tablets and other electronic devices, namely, computer game programs
Please respond to this email or call me (you may leave a message of approval) by close of business on 11/21/2019, and I can make the changes to your application for you and then approve the mark for the next step of the registration process. If you do not contact me by then, I will have to issue an Office action requiring these changes.
Best Regards,
John
John Salcido
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122