NOTE TO THE FILE
Sent to TICRS as Serial Number: 88638978SERIAL NUMBER: 88640463
DATE: 01/08/2020
NAME: sferrell
NOTE:
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 TRADEUPS
From: Baio, Elizabeth <ebaio@nixonpeabody.com>
Sent: Wednesday, January 8, 2020 12:35 PM
To: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Cc: Birkeneder, Erik <ebirkeneder@nixonpeabody.com>; Jewett, Lynda <ljewett@nixonpeabody.com>
Subject: FW: USPTO Trademark Application: 88638978 NHQ-10 (Your Docket No. 084394-17US) and 88640463 NHQ-10 (084394-18US)
Dear Mr. Ferrell,
Thank you for your e-mail. We agree with your proposed amendment to the class 42 services. Can you please enter the amendment via an Examiner’s Amendment for both applications?
Please let us know if you need anything else.
Many thanks for your help, and Happy New Year!
Ela
Elizabeth W. Baio
Partner
ebaio@nixonpeabody.com
T 312-425-8684 | C 312-351-3153 | F 866-750-3413
Nixon Peabody LLP | 70 West Madison, Suite 3500 | Chicago, IL 60602-4224
nixonpeabody.com | @NixonPeabodyLLP
Please consider the environment before printing this email.
This email message and any attachments are confidential and may be protected by the attorney/client or other applicable privileges. The information is intended to be conveyed only to the designated recipient(s) of the message. If you are not an intended recipient, please notify the sender immediately and delete the message from your email system. Unauthorized use, dissemination, distribution or reproduction of this message by other than the intended recipient is strictly prohibited and may be unlawful. Thank you.
From: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Sent: Wednesday, January 8, 2020 4:28 AM
To: Chicago Trademark Mail <chitm@nixonpeabody.com>; Baio, Elizabeth <ebaio@nixonpeabody.com>; Birkeneder, Erik <ebirkeneder@nixonpeabody.com>
Subject: USPTO Trademark Application: 88638978 NHQ-10 (Your Docket No. 084394-17US) and 88640463 NHQ-10 (084394-18US)
[EXTERNAL E-MAIL]
Good Morning Elizabeth Baio,
I am reviewing the above referenced applications for your client, Blackthorn Therapeutics, Inc. In review of these applications there is one issue that can be corrected without the need for Office actions.
Namely, we require an amended identification of the services identified in International Class 42 because the wording “Non-downloadable computer software. . . ” is overly broad and can be classified in multiple classes. For instance, this includes multimedia software recorded on CD-ROM in International Class 9 and providing online, non-downloadable software in International Class 42. Specifically, the suggested identification would read, with suggested changes underlined:
International Class 42: Providing online, non-downloadable computer software for administering questionnaires, tests, and assessments relating to a patient's mental health, including for screening and diagnosing a patient's psychological condition and recommending treatments and drug development
Please let me know if you would approve of my amending the identification as described.
Approving these changes will place the applications in condition for approval for publication.
Please respond no later than 2 PM EST on Friday, January 10, 2019.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
/Steven W. Ferrell Jr./
Trademark Examining Attorney
Law Office 121
Phone: (571)270-3424
E-mail: steven.ferrell@uspto.gov
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.
Notice to applicants and attorneys: 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.