NOTE TO THE FILE
Sent to TICRS as Serial Number: 88716015SERIAL NUMBER: 88716024
DATE: 09/30/2020
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: Michelle L. DiCarlo <MDiCarlo@dickinson-wright.com>
Sent: Tuesday, September 29, 2020 3:34 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Nicole M. Meyer <nmeyer@dickinson-wright.com>
Subject: FW: EXTERNAL: ARIA, ser. no. 88716015
Dear Examiner Griffin,
Attached are the filing receipts for the Voluntary Amendments filed for ARIA Serial Nos. 88/716,024 and 88/716,015.
Please let us know if further information is required.
Best Regards,
Michelle
For docketing purposes of patent & trademark matters only, please add the appropriate email of dwpatents@dickinsonwright.com or dwtrademarks@dickinsonwright.com to any emails being sent to our office. Thank you.
Michelle L. DiCarlo Paralegal
International Square
1825 Eye St. N.W.
Suite 900
Washington, D.C. 20006
Phone
202-659-6921
Fax
844-670-6009
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Tuesday, September 29, 2020 2:24 PM
To: Nicole M. Meyer <nmeyer@dickinson-wright.com>
Cc: Michelle L. DiCarlo <MDiCarlo@dickinson-wright.com>; DWTrademarks <DWTrademarks@dickinson-wright.com>
Subject: RE: EXTERNAL: ARIA, ser. no. 88716015
Hi Nicole,
I can make those changes for you. The easiest way is for you to just use our “voluntary amendment” form (http://teas.gov.uspto.report/wna/office/pra/) to pay the filing fee for the additional class, and then I can take care of everything else for you. Click “yes” to number 6 on that form. Please let me know when that’s done and I’ll finish up. Obviously, do ser. no. 88716024 as well, assuming you’re making the same ID change on that one, too.
Jim
From: Nicole M. Meyer <nmeyer@dickinson-wright.com>
Sent: Tuesday, September 29, 2020 1:14 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Michelle L. DiCarlo <MDiCarlo@dickinson-wright.com>; DWTrademarks <DWTrademarks@dickinson-wright.com>
Subject: RE: EXTERNAL: ARIA, ser. no. 88716015
Jim,
If possible, please add the following Class 42 description:
Providing online, non-downloadable software for use in detecting traffic in real time; Providing online, non-downloadable software for use in the transportation industry for the purpose of traffic control and signal prioritizing.”
Will we need to do this online, so the additional class fee can be paid?
Please also amend Class 9 to remove the reference to software.
Best regards,
Nicole
For docketing purposes of patent & trademark matters only, please add the appropriate email of dwpatents@dickinsonwright.com or dwtrademarks@dickinsonwright.com to any emails being sent to our office. Thank you.
Nicole M. Meyer Practice Group Chair - Trademarks & Copyrights
International Square
1825 Eye St. N.W.
Suite 900
Washington, D.C. 20006
Phone
202-659-6924
Fax
844-670-6009
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Thursday, September 24, 2020 11:20 AM
To: Nicole M. Meyer <nmeyer@dickinson-wright.com>
Cc: Michelle L. DiCarlo <MDiCarlo@dickinson-wright.com>; DWTrademarks <DWTrademarks@dickinson-wright.com>
Subject: EXTERNAL: ARIA, ser. no. 88716015
Importance: High
Hi Nicole,
On this one, Class 9 again is the issue. For the software, I had given as options either “downloadable” or “recorded” to keep it in Class 9. I indicated that online software is in Class 42 as a service. The applicant amended the ID to read:
Traffic signal control devices; computer hardware and computer software systems that are Cloud-based, web-based, hosted from a central location, and must use a browser to use and access the data, for detecting traffic in real time; computer hardware and computer software that are Cloud-based, web-based, hosted from a central location, and must use a browser to use and access the data used in the transportation industry for the purpose of traffic control and signal prioritizing
The references to cloud-based, web-based, hosted and via a browser appear to refer to online software, which is in Class 42. Applicant would have to add Class 42 to keep the online software, or we could delete the reference to software and just keep the hardware in Class 9. If applicant is referring to software that can be downloaded from the cloud or the web, then we need to go with my suggested “downloadable computer software for _____” wording in Class 9. It doesn’t matter where the software can be downloaded from (web, cloud, etc.). But all “hosted” software and software used via a browser is online software.
The preferred wording in Class 42 would be:
Providing online, non-downloadable software for use in detecting traffic in real time; Providing online, non-downloadable software for use in the transportation industry for the purpose of traffic control and signal prioritizing
This one also has the foreign registration issue and a potential 2d issue, so after cleaning up the ID we’d still need to suspend it.
Let me know how you’d like to proceed.
Jim