NOTE TO THE FILE
Sent to TICRS as Serial Number: 88582505SERIAL NUMBER: 88582491
DATE: 11/21/2019
NAME: arosen
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:
From: James Borras <jameseborraslaw@gmail.com>
Sent: Wednesday, November 20, 2019 3:38 PM
To: Rosen, Amanda <Amanda.Rosen@USPTO.GOV>
Subject: Re: Response Requested re: "GeoToll" marks
Ms. Rosen,
Please update the ID for the "GeoToll" marks as provided below and as provided in my prior email:
Class 9: Downloadable computer software, namely, an electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone environment and a web-based environment, namely, software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants in the field of tolling
This would apply for all the "GeoToll" marks including:
SMARTOLLING 88582505
GEOFIND 88582278
GEOCONCILE 88582482
GEOVIZ 88582358
GEOEVAL 88582491
GEOPLAZA 88582380
GEOSIM 88582412
GEOGANTRY 88582396
Please let me know if this email and ID is acceptable, or whether you would like me to send individual emails for each mark. Please also let me know what evidence would next be needed to show for final approval of these marks. Thank you again for all your assistance.
Sincerely,
James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.
On Wed, Nov 20, 2019 at 2:17 PM James Borras <jameseborraslaw@gmail.com> wrote:
Ms. Rosen,
Please let me know if the wording may be amended accordingly within the scope of the original identification:
Class 9: Computer software, namely, an electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone and web-based environment, namely, software tool for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants in the field of tolling.
I have removed the words "Downloadable" and "PDA" from the description.
This would apply for all the "GeoToll" marks including:
SMARTOLLING 88582505
GEOFIND 88582278
GEOCONCILE 88582482
GEOVIZ 88582358
GEOEVAL 88582491
GEOPLAZA 88582380
GEOSIM 88582412
GEOGANTRY 88582396
Sincerely,
James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.
On Wed, Nov 20, 2019 at 11:18 AM Rosen, Amanda <Amanda.Rosen@uspto.gov> wrote:
Hello Mr. Borras,
Unfortunately, this amendment will not be accepted. You are not permitted to amend the identification such that it is beyond the scope of the original identification. The original identification states that applicant provides “Downloadable computer software”. This is a Class 9 good. You may not amend this to specify that applicant is providing SAAS, which is a Class 42 service. Further, the wording regarding the field would need to be amended to remain within the scope of the original. It might read something like:
Class 9: Downloadable computer software, namely, an electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, personal digital assistant (PDA), and web-based environment, namely, software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants
My deadline to send out a refusal is today, so if I do not receive an amended identification that is within the scope of the original by midday today, I will need to send the refusals out.
Sincerely,
Amanda Rosen
/Amanda Rosen/
Attorney Advisor, Law Office 121
Phone: 571-270-5984
Email: Amanda.Rosen@uspto.gov
Please be advised that 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.
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit: http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
From: James Borras <jameseborraslaw@gmail.com>
Sent: Wednesday, November 20, 2019 9:35 AM
To: Rosen, Amanda <Amanda.Rosen@USPTO.GOV>
Subject: Re: Response Requested re: "GeoToll" marks
Hello Ms. Rosen,
Please be advised that I will be updating the class and descriptions for these "GeoToll" marks to the following:
SMARTOLLING 88582505
GEOFIND 88582278
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants
-----------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
GEOCONCILE 88582482
GEOVIZ 88582358
GEOEVAL 88582491
GEOPLAZA 88582380
GEOSIM 88582412
Class 42: Software as a service (SAAS) services featuring software for use in database management in the field of tolling
Please let me know if this change can be made via Examiner's Amendment or whether this change is too fundamental and would need me to make the change in the USPTO online service.
Sincerely,
James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.
On Sat, Nov 16, 2019 at 12:58 PM Rosen, Amanda <Amanda.Rosen@uspto.gov> wrote:
Hello Mr. Borras,
I am also reviewing the applications for:
· SMARTOLLING 88582505
· GEOCONCILE 88582482
· GEOVIZ 88582358
· GEOEVAL 88582491
· GEOFIND 88582278
· GEOPLAZA 88582380
· GEOSIM 88582412
As with the other applications: “PDA” may not be used in the identification. Applicant must spell out the name of the goods they are referring to. Thus, I can suggest the following identification, if accurate:
· Class 9: Downloadable computer software, namely, an electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, personal digital assistant (PDA), and web-based environment
· Please let me know whether you consent to the amended identification above for each of the listed applications. Once I have your consent to amend the ID, I can send out Examiner’s Amendments and publish the marks
If we are able to resolve this issue by 11/20/19, I will be able to send out the Examiner’s Amendments in lieu of issuing refusals via Office actions. Please be sure to sign all e-mail communications with your full name, for the record.
Sincerely,
Amanda Rosen
/Amanda Rosen/
Attorney Advisor, Law Office 121
Phone: 571-270-5984
Email: Amanda.Rosen@uspto.gov
Please be advised that 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.
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit: http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
--James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.
--James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.
--James Borras, Esq.
Law Offices of James E. Borras, PLLC
7260 S.W. 8th Street
Miami, FL 33144
(305) 209-3854
CONFIDENTIALITY NOTICE: This e-mail message including attachments, if any, is intended for the person or entity to which it is addressed and may contain confidential and/or privileged material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message. Thank you.