Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88813092

DATE:                                12/15/2020

NAME:                               jhilliard

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

From: Stewart, Cynthia <cstewart@fbtlaw.com>
Sent: Tuesday, December 15, 2020 2:31 PM
To: Hilliard, Jessica <Jessica.Hilliard@USPTO.GOV>; Trademarks <Trademarks@fbtlaw.com>
Cc: Jackson, Angela M. <ajackson@fbtlaw.com>
Subject: RE: Trademark Application Serial No. 88813092 (S SITEL GROUP)

 

 

Dear Ms. Hilliard,

 

Thank you for your email.   

 

We agree with your proposed change in the descriptions of services for Classes 35 and 37.   Also, we would like to add the word “appliances” in Class 37 after “ consumer goods in the nature of”, so that the one section of  Class 37 that you have requested us to address would be revised to read as follows:   

 

International Class 37: Technical support, namely, troubleshooting in the nature of repair and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods in the nature of appliances;

 

I believe that I have addressed all your points below, and if not, please let me know.

 

Thanks again for your attention to this application.    We appreciate it!

 

Take care.

 

Sincerely,

 

Cindy Stewart

 

 

Cynthia Stewart Attorney at Law | Frost Brown Todd LLC   502.568.0225  Direct 502.262.5094  Mobile   cstewart@fbtlaw.com

 

From: Hilliard, Jessica <Jessica.Hilliard@USPTO.GOV>
Sent: Tuesday, December 15, 2020 1:05 PM
To: Trademarks <Trademarks@fbtlaw.com>
Cc: Stewart, Cynthia <cstewart@fbtlaw.com>; Jackson, Angela M. <ajackson@fbtlaw.com>
Subject: Trademark Application Serial No. 88813092 (S SITEL GROUP)

 

Good afternoon,

 

I’m contacting you regarding Trademark Application Serial No. 88813092 for the mark “S SITEL GROUP”.  The application is in very good shape, and there were just a few small issues with the identification of services that I think we can address via email/examiner’s amendment.  Specifically:

 

• The Class 35 wording “business process outsourcing services, namely, business assistance in the field of product and service sales; business process outsourcing services, namely, business assistance in the field of supply and equipment purchasing; business process outsourcing services, namely, business assistance in the field of back office services” must specify that the services are business management assistance services or business administration assistance services.  The wording “business assistance” is not definite, and must specify if the services are for business administration assistance or business management assistance.
• The Class 37 wording “Technical support, namely, troubleshooting in the repair and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods” must specify that the services are for troubleshooting in the nature of repair and maintenance of telephones, mobile phones, etc., in order to clarify that the main service being identified is the repair and maintenance of telephones, mobile phones, etc.
• The Class 37 wording “Technical support, namely, troubleshooting in the nature of repair and maintenance of…consumer goods” must specify the type of consumer goods being repaired and maintained.  The language “repair and maintenance of…consumer goods” on its own is not definite (for example, repair and maintenance of consumer goods such as televisions is classified in Class 37, while repair and maintenance of consumer goods in the nature of computer software would be classified in Class 42).  Therefore, to make this entry sufficiently definite and properly classified, the type of consumer goods being repaired and maintained must be clarified.  Please note that if the entry is amended to specify that the services are for repair and maintenance of computer software, that particular service will need to be reclassified in Class 42.

 

Below is a suggested amendment to the identification that would address this issue (changes in bold):

 

International Class 35: Customer services, namely, responding to customer inquiries for others in the field of product and service sales, billing, and product/service information and repair or replacement by telephone, internet, in the nature of chat and moderation, e-mail and SMS for others; business process outsourcing services, namely, business administration assistance in the field of product and service sales; business process outsourcing services, namely, business administration assistance in the field of supply and equipment purchasing; business process outsourcing services, namely, business administration assistance in the field of back office services; operation of telephone call centers for others

 

International Class 36: Debt collection agency services; business process outsourcing services, namely, financial analysis in the field of product and service sales; business process outsourcing services, namely, financial analysis in the field of supply and equipment purchasing; business process outsourcing services, namely, financial analysis in the field of back office services

 

International Class 37: Technical support, namely, troubleshooting in the nature of repair and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods in the nature of {specify the type of consumer goods, not including computer software}; technical support services, namely, troubleshooting in the nature of the repair of computer hardware; consulting in the field of the repair of computer hardware

 

International Class 41: Business process outsourcing services, namely, business training in the field of product and service sales; business process outsourcing services, namely, business training in the field of supply and equipment purchasing; business process outsourcing services, namely, business training in the field of back office services

 

International Class 42: Technical support, namely, troubleshooting in the nature of diagnosing computer hardware and software program problems

 

Please let me know if the suggested identification changes are acceptable – if so, I would be happy to enter the changes for you via an examiner’s amendment.  If you could please reply by Wednesday, December 16^th at 6pm Eastern Time, I would very much appreciate it.  If I don’t hear from you by that time, I’ll go ahead and issue the office action, but I hope to hear from you soon.  If you’d prefer to reply via phone, I can be reached at 571-272-4031.

 

Best regards,

 

Jessica L. Hilliard

Trademark Examining Attorney

Law Office 120

571-272-4031

Jessica.Hilliard@uspto.gov