NOTE TO THE FILE
SERIAL NUMBER: 88790292
DATE: 05/01/2020
NAME: phoward
NOTE:
From: Grahn, Barbara J. <bgrahn@foxrothschild.com>
Sent: Tuesday, April 28, 2020 12:50 PM
To: Howard, Parker <Parker.Howard@USPTO.GOV>
Cc: Rodrigue, Dona M. <drodrigue@foxrothschild.com>; IPDocket <IPDocket@foxrothschild.com>
Subject: RE: Initial question regarding 3 Entrust Datacard Corporation trademark applications
Dear Mr. Howard –
Thanks for your e-mail. Entrust, Inc. is a subsidiary of Entrust Datacard Corporation. There is a unity of control with respect to all of the Entrust marks. Here is a link to an announcement of the acquisition of Entrust, Inc. by DataCard Corporation (now Entrust Datacard Corporation): http://www.businesswire.com/news/home/20140113005993/en/Datacard-Group-Finalizes-Acquisition-Entrust. Please confirm that this information is sufficient under TMEP 1201.07(b)(i) to establish the unity of control.
If you would like to discuss, please feel free to call. My office phone should redirect to my cell, but you may call me directly at 612-839-2110 if you prefer.
Thank you,
Barb
Barbara Grahn
(612)-607-7325 – direct
From: Howard, Parker <Parker.Howard@USPTO.GOV>
Sent: Tuesday, April 28, 2020 11:41 AM
To: Grahn, Barbara J. <bgrahn@foxrothschild.com>
Cc: drodrigue@foxrothschild.comm
Subject: [EXT] Initial question regarding 3 Entrust Datacard Corporation trademark applications
Ms. Grahn,
Good morning.
As I was examining your client Entrust Datacards’s trademark applications for E, Serial No. 88790286, E ENTRUST, Serial No. 88790292 and ENTRUST, Serial No. 88791582, I noticed that with regard to the latter two, there are many different potential partial Section 2(d) refusals for your client’s goods/services in Classes 9, 42 and 45 (but not Classes 2, 7, 16, or 37) based on the following registrations, all owned by Entrust, Inc:
ENTRUST – Reg. No. 3798703
ENTRUST – Reg. No. 1979214
ENTRUST TRUE PASS – Reg. No. 4395867
ENTRUST DISCOVERY – Reg. No. 4395866
ENTRUST TRANSACTIONGUARD – Reg. No. 4396042
ENTRUST AUTHORITY – Reg. No. 4320664
ENTRUST OPEN FRAUD INTELLIGENCE NETWORK – Reg. No. 3761534
ENTRUST EINTELLIGENCE – Reg. No. 2532429
ENTRUST READY – Reg. No. 2735107
I then noticed that you are also listed as counsel for all of these Entrust, Inc. marks.
However, I did not see a claim of ownership by Entrust Datacard of the Entrust Inc. marks, nor did I see a statement of unity of control.
Please advise at your earliest convenience since this will require a lot of work to sort out.
I have not yet fully examined whether all of the 9 classes of goods and services are acceptable (but I have noticed that there are some instances of “computer software” in Class 9 that do not have the required language “downloadable” or “recorded”). I will send an email regarding those depending on the Section 2(d) issue.
I thank you in advance for helping me allot time to deal with these three applications by my deadline of Friday morning.
Regards,
Parker Howard
Examining Attorney
U.S. Patent and Trademark Office
Alexandria, Virginia
571-272-6548