NOTE TO THE FILE
SERIAL NUMBER: 88681785
DATE: 12/03/2019
NAME: ladorno
NOTE:
Searched:
X Google
Lexis/Nexis
OneLook
X 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 via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search 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: Holt, Thomas L. (Perkins Coie) <THolt@perkinscoie.com>
Sent: Tuesday, December 3, 2019 12:38 PM
To: Adorno, Luz <Luz.Adorno@USPTO.GOV>
Cc: Gosselin, Noreen (Perkins Coie) <NGosselin@perkinscoie.com>
Subject: RE: 132056-4005.US01 - SOUNDESCAPES - 009 - Response to EA
Hi Luz,
Thank you for your email. This confirms that Applicant would like to amend the identification in Class 9 and add Class 42 as follows:
Class 9: Audio recordings featuring music, noises, natural sounds, and synthetic sounds; Downloadable mobile applications featuring music, noises, natural sounds, and synthetic sounds; downloadable computer software featuring music, noises, natural sounds, and synthetic sounds
Class 42: Providing on-line non-downloadable software featuring music, noises, natural sounds, and synthetic sounds
So, I guess the best course would be for you to issue the Priority Action.
Please let me know if you have any questions.
Best,
Tom
Thomas L. Holt | Perkins Coie LLP
CHI: 312.324.8438; NYC: 212.261.6894
From: Adorno, Luz <Luz.Adorno@USPTO.GOV>
Sent: Tuesday, December 03, 2019 11:06 AM
To: Holt, Thomas L. (CHI) <THolt@perkinscoie.com>
Subject: RE: 132056-4005.US01 - SOUNDESCAPES - 009 - Response to EA
Hello Tom,
Only “downloadable” or “recorded” are acceptable for software in Class 9 since “non-downloadable” encompasses Class 42 software services. If applicant wants to add Class 42 (“Providing on-line non-downloadable software featuring music, noises, natural sounds, and synthetic sounds”), an additional fee of $275.00 will be necessary. In that case, I can issue a priority action instead. Please let me know how the applicant would like to proceed.
Best,
Luz
From: Holt, Thomas L. (Perkins Coie) <THolt@perkinscoie.com>
Sent: Monday, December 2, 2019 7:19 PM
To: Adorno, Luz <Luz.Adorno@USPTO.GOV>
Cc: Gosselin, Noreen (Perkins Coie) <NGosselin@perkinscoie.com>
Subject: RE: 132056-4005.US01 - SOUNDESCAPES - 009 - Response to EA
Hi Luz,
Thank you for your messages. Please advise whether we are able to include both downloadable and non-downloadable software as shown below.
Audio recordings featuring music, noises, natural sounds, and synthetic sounds; Downloadable mobile applications featuring music, noises, natural sounds, and synthetic sounds; downloadable and non-downloadable computer software featuring music, noises, natural sounds, and synthetic sounds
Best,
Tom
Thomas L. Holt | Perkins Coie LLP
CHI: 312.324.8438; NYC: 212.261.6894
From: Adorno, Luz <Luz.Adorno@USPTO.GOV>
Sent: Monday, December 2, 2019 1:12 PM
To: *USPTO Filing Receipts <pctrademarks@perkinscoie.com>
Subject: OFFICIAL USPTO EMAIL: Trademark application for SOUNDESCAPES, Serial No. 88681785
Dear Attorney Holt,
I am following up on a voicemail I left for you earlier today regarding the above referenced trademark application for your client Panasonic Avionics Corporation (docket No. 132056-4005).
As I indicated, we require a minor amendment to the identification of goods to further clarify the nature of the software, i.e., downloadable or recorded. I propose the following amendment (changes noted in bold font):
Audio recordings featuring music, noises, natural sounds, and synthetic sounds; Downloadable mobile applications featuring music, noises, natural sounds, and synthetic sounds; downloadable computer software featuring music, noises, natural sounds, and synthetic sounds
Please let me know if amending the identification of goods as noted above is acceptable to the applicant. I can then make the changes by issuing an Examiner’s Amendment and conduct a final review pending supervisory approval. I appreciate your response by Thursday, December 4 at 5pm EST. If I do not hear from you by then, I will issue an Office action for the same.
If you have any questions or would like to further discuss, please feel free to call or email me.
Best regards,
--
/Luz M. Adorno Santos/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 111
Phone: (571) 272-4902
**Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §709.04. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.**
NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.