NOTE TO THE FILE
Sent to TICRS as Serial Number: 88147642SERIAL NUMBER: 88147674
DATE: 01/23/2019
NAME: jdixon1
NOTE:
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 TRADEUPSFrom: Dixon, Jennifer
Sent: Wednesday, January 23, 2019 4:37 PM
To: 'Downey, Anne F.' <adowney@hselaw.com>
Cc: trademark <trademark@hselaw.com>
Subject: RE: Point of Use, Time of Need - please do an EA [HSELAW-WORKSITE.FID791994]
Okay, thank you. I will send those out.
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.
From: Downey, Anne F. [mailto:adowney@hselaw.com]
Sent: Wednesday, January 23, 2019 2:14 PM
To: Dixon, Jennifer <Jennifer.Dixon@USPTO.GOV>
Cc: trademark <trademark@hselaw.com>
Subject: Point of Use, Time of Need - please do an EA [HSELAW-WORKSITE.FID791994]
Client approved your requested amendments/disclaimers. Please prepare Examiner Amendments. Thank you.
Anne F. Downey, Partner
Harter Secrest & Emery LLP, Attorneys and Counselors
50 Fountain Plaza, Suite 1000, Buffalo, NY 14202-2293
Firm 716.853.1616 Direct 716.844.3768 Fax 716.853.1617
This e-mail message is from a law firm and may contain information that is privileged or confidential. It is not intended for transmission to, or receipt by, any unauthorized persons. If you have received this electronic mail transmission in error, do not read it. Please delete it from your system without copying it, and notify the sender by reply e-mail at adowney@hselaw.com or by calling 716.844.3768, so that our address record can be corrected.
From: Dixon, Jennifer <Jennifer.Dixon@USPTO.GOV>
Sent: Wednesday, January 23, 2019 11:26 AM
To: Downey, Anne F. <adowney@hselaw.com>; trademark <trademark@hselaw.com>
Subject: TM Apps SNs 88147642, 88147674, 88147686 POINT OF USE, TIME OF NEED Marks
This email is intended for Anne Downey and/or any authorized party
Applications Serial Nos.: 88147642, 88147674, 88147686
Marks: POINT OF USE, TIME OF NEED Marks
Good morning Ms. Downey:
I am the trademark examining attorney with the USPTO assigned to the above-referenced applications. There are some issue(s) with each of these applications that must be addressed before the application can be approved to proceed to publication.
SN 88147642 POINT OF USE, TIME OF NEED
(1) IDENTIFICATION OF SERVICES (CLASS 42) – The wording “providing temporary use of non-downloadable cloud-based software and technology solutions,…” is indefinite because the nature of what the applicant means by “technology solutions” is unclear. Besides software, it is unclear what would be provided on a temporary basis in this recitation. Therefore, the applicant must either delete this wording or provide more specific information to clarify the nature of these goods. The following amended wording is suggested:
Class 42 - Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software
and technology solutions, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents
SN 88147674 POINT OF USE, TIME OF NEED SUPPLY CHAIN
(1) IDENTIFICATION OF SERVICES (CLASS 42) – The wording “providing temporary use of non-downloadable cloud-based software and technology solutions,…” is indefinite because the nature of what the applicant means by “technology solutions” is unclear. Besides software, it is unclear what would be provided on a temporary basis in this recitation. Therefore, the applicant must either delete this wording or provide more specific information to clarify the nature of these goods. The following amended wording is suggested:
Class 42 - Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software
and technology solutions, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents
(2) DISCLAIMER – The wording “SUPPLY CHAIN” is merely descriptive of the subject matter and/or intended use of the applicant’s goods/services, and therefore, must be disclaimed. The following disclaimer statement is proposed:
No claim is made to the exclusive right to use “SUPPLY CHAIN” apart from the mark as shown.
SN 88147686 POINT OF USE, TIME OF NEED DIGITAL SUPPLY CHAIN
(1) IDENTIFICATION OF SERVICES (CLASS 42) – The wording “providing temporary use of non-downloadable cloud-based software and technology solutions,…” is indefinite because the nature of what the applicant means by “technology solutions” is unclear. Besides software, it is unclear what would be provided on a temporary basis in this recitation. Therefore, the applicant must either delete this wording or provide more specific information to clarify the nature of these goods. The following amended wording is suggested:
Class 42 - Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software
and technology solutions, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents
(2) DISCLAIMER – The wording “DIGITAL SUPPLY CHAIN” is merely descriptive of the subject matter and/or intended use of the applicant’s goods/services, and therefore, must be disclaimed. The following disclaimer statement is proposed:
No claim is made to the exclusive right to use “DIGITAL SUPPLY CHAIN” apart from the mark as shown.
I can enter the above proposed changes in all three applications by Examiner’s amendment, with your approval. However, I need to act on this application by COB this Friday. Therefore, please respond with your instructions by 2:30pm EST on Friday, January 25th. If you are unable to respond by that time, I will send an Office action making this requirement, but am still happy to do an Examiner’s amendment at a later date.
Thank you for your time and consideration.
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.