NOTE TO THE FILE
SERIAL NUMBER: 88687827
DATE: 12/11/2019
NAME: dbednarz
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: Slafsky, John <JSlafsky@wsgr.com>
Sent: Wednesday, December 11, 2019 1:23 PM
To: Bednarz, Dustin <Dustin.Bednarz@USPTO.GOV>
Cc: Trademarks <Trademarks@wsgr.com>; Wilson, Jane <JWilson@wsgr.com>
Subject: RE: 88687822- GRAIL; 88687827 - GRAIL
Thank you.
The proposed amendments below are acceptable.
John
John Slafsky
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, CA 94304
650-320-4574
From: Bednarz, Dustin <Dustin.Bednarz@USPTO.GOV>
Sent: Wednesday, December 11, 2019 10:19 AM
To: Trademarks <Trademarks@wsgr.com>
Cc: Slafsky, John <JSlafsky@wsgr.com>
Subject: 88687822- GRAIL; 88687827 - GRAIL
Attorney Slafsky:
I am contacting you regarding your client Grail Inc.’s applications to register the following marks with the USPTO:
88687822- GRAIL; and
88687827 – GRAIL.
Specifically, I am requesting clarification regarding certain entries in the identification of goods and services.
First, as of Jan. 1, 2019, all software must be clarified as downloadable/recorded on computer media for class 009 software goods, or as providing online, non-downloadable software for services in classes 041 and 42. Accordingly the class 009 entry “computer software for genetic and bioinformatics analysis” must be clarified as “downloadable computer software for genetic and bioinformatics analysis”.
Additionally, the entry “medical testing for screening, diagnostic or treatment purposes;” must be clarified, as certain screening services may be considered class 042 services (DNA screening for scientific research purposes). Accordingly, this entry may be clarified as “medical testing for diagnostic or treatment purposes; medical screening;”, if accurate.
With your authorization to make these or other acceptable changes, I may proceed with approving these applications for publication in the Official Gazette.
Please respond by close of business on Thursday, Dec. 12, 2019 if you wish to proceed via Examiner’s Amendment; if you need more time, please let me know and I may issue an Office Action addressing these requirements.
If you have any questions, please feel free to contact me via e-mail or at the phone number below.
Regards,
/Dustin Bednarz/
Trademark Examining Attorney
USPTO Law Office 121
571.270.1151
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