NOTE TO THE FILE
SERIAL NUMBER: 88592055
DATE: 04/23/2020
NAME: jgriffin
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:X OTHER:
From: mramoslynch@cognitionip.com <mramoslynch@cognitionip.com>
Sent: Thursday, April 23, 2020 5:45 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: Re: ARC office action response, ser. no. 88592055
Hi Jim,
I was finally able to confirm with the client that they are fine with your suggested changes. Is it still possible to take care of this through an EA?
I hope all is well on your side.
all the best,
Michael
On April 10, 2020, 11:45 AM CDT mramoslynch@cognitionip.com wrote:
Thanks, Jim.
On Fri, Apr 10, 2020 at 11:27 AM Griffin, Jim <Jim.Griffin@uspto.gov> wrote:
Appreciate your efforts. Odd that they never responded, but who knows what they’re dealing with. At any rate, I’ll send the final today and if you hear back just call me for the examiner’s amendment.
From: Michael Ramos-Lynch <mramoslynch@cognitionip.com>
Sent: Thursday, April 9, 2020 9:43 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: Re: ARC office action response, ser. no. 88592055
Hi Jim,
Totally agreed. I've tried several times to get in touch with the client but surprisingly to no avail so far. I understand if you need to issue the final action tomorrow.
Thanks for all your patience thus far.
all the best,
Michael
On Wed, Apr 8, 2020 at 1:21 PM Griffin, Jim <Jim.Griffin@uspto.gov> wrote:
Hi Michael,
Just checking in again. My deadline is Friday. Would love to handle this via examiner’s amendment if possible since it’s such a minor change.
Jim
From: mramoslynch@cognitionip.com <mramoslynch@cognitionip.com>
Sent: Thursday, April 2, 2020 12:48 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: Re: ARC office action response, ser. no. 88592055
Hi Jim,
Understand if you need to issue a final OA but for what it's worth I am trying to get in touch with my client. I am hoping to confirm this with her very soon. I think she's been especially busy given the current climate.
Thanks for your patience and updates so far.
all the best,
Michael
On April 1, 2020, 10:22 AM CST jim.griffin@uspto.gov wrote:
Yes, of course.
From: mramoslynch@cognitionip.com <mramoslynch@cognitionip.com>
Sent: Tuesday, March 31, 2020 10:51 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: Re: ARC office action response, ser. no. 88592055
Hi Jim,
Thanks so much for your patience. I should be able to confirm with my client tomorrow. It should be fine, but I of course need to get a final greenlight from them. Can we have another 24 hours?
all the best,
Michael
On March 31, 2020, 4:17 PM CST jim.griffin@uspto.gov wrote:
Hi Michael,
Can you let me know whether these changes below are acceptable? I’d hate to have to do a final refusal over a simple ID amendment.
Regards,
Jim Griffin
From: Griffin, Jim
Sent: Monday, March 23, 2020 1:24 PM
To: mramoslynch@cognitionip.com
Subject: ARC office action response, ser. no. 88592055
Importance: High
Hi Michael,
I got your response for this application. In general it’s fine, and I’ll withdraw the 2(d) refusals based on the deletion of Class 35. All that remains are a couple minor ID issues. First, in Class 41, we need to remove the parentheses and incorporation the parenthetical matter into the ID. That’s just an Office formatting requirement. So I’d suggest:
Educational services, namely, providing on-line instruction and peer learning in the field of software development; Educational services, namely, providing on-line instruction and peer learning for professional service providers, for example, teachers, designers, and engineers, for certification in the field of software development
Second, in Class 42, I note that you’ve added the wording “Providing temporary use of a web-based software application for providing remote job listings.” We need to delete that wording since it’s beyond the scope of any of the wording the in the recitation of services as filed. You can’t add any goods or services to the ID after the application has been filed. You can only delete things or limit them in some way. So that wording has to go.
If these two changes are acceptable, I can enter them for you via an examiner’s amendment and get this application approved. Please let me know.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169
jim.griffin@uspto.gov