NOTE TO THE FILE
Sent to TICRS as Serial Number: 90032957SERIAL NUMBER: 90032957
DATE: 11/25/2020
NAME: jnelman
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: LaFrance, Andrea M. <alafrance@bhfs.com>
Sent: Wednesday, November 25, 2020 2:05 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>; Francis, Matthew D. <MFrancis@BHFS.com>
Cc: DN - Trademark Docket <DNTrademarkDocket@BHFS.com>
Subject: RE: Clarification Needed Regarding Application SN 90032957 AUTOMATE NOW
Dear Examiner Nelman,
Our client accepts your proposed amendments as set forth below. Please let us know if you need anything further.
Thank you,
Andrea
Andrea M. LaFrance
Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street, Suite 2200
Denver, CO 80202
303.223.1182 tel
alafrance@bhfs.com
From: Nelman, Jesse [mailto:Jesse.Nelman@USPTO.GOV]
Sent: Wednesday, November 25, 2020 11:38 AM
To: Francis, Matthew D.
Cc: DN - Trademark Docket; LaFrance, Andrea M.
Subject: Clarification Needed Regarding Application SN 90032957 AUTOMATE NOW
Hello,
I’m the trademark examining attorney assigned to U.S. APPLICATION SERIAL NO. 90032957 AUTOMATE NOW. There’s an issue that I’d like to speak with you about that can be resolved with applicant’s agreement. Due to Office deadlines, I will need a response from you no later than November 27, 2020. If I don't hear from you by this time, I will issue an Office action with respect to the relevant issue, to which you will have an opportunity to respond.
Identification of Services
The identification of services is indefinite. I suggest the following, if accurate (amendments made in bold italicized text and strikethroughs):
Class 35— Employment and advertising agency services for others and business marketing research, namely, market research
andstudies, statistical evaluation of market research data, and business data analyses; consulting services related to employment and advertising agency services for others and business marketing research, namely, market researchandstudies, statistical evaluation of market research data, and business data analyses; business management services, namely, remote and onsite business management of computer sites for others and business research and consulting services related thereto; Customer relationship management services that automates customer interactions using intelligent virtual assistants, automating business processes using robotic desktop automation and robotic process automation.
Class 36— Financial analysis and financial consulting services, namely, expert analysis in finance
Class 38— Telecommunications services, namely, providing telephone services and transmission of electronic mail; providing multiple-user access to a global computer information network; telecommunications services, namely, routing calls for others to customer service representatives
Class 41— Educational services, namely, training in the field of job placement, recruiting, staffing and hiring; training in the field of customer care and customer relationship management, particularly training for customer service representatives and for those hiring customer service representatives; educational services, namely, conducting classes, seminars, training sessions and workshops in the fields of effective marketing, consulting, and communications skills
Class 42— Software as a service (SAAS) services featuring software for use in the provision of customer care and customer relationship management services, namely, software that allows users to automate customer interactions and business processes for the purpose of customer relationship management, marketing and sales, collecting and analyzing data for the purpose of providing strategy, insight and reporting on customer relationship management, marketing, sales, operation, product design, and employee efficiency, and for the purpose of providing data analytics to monitor, track, service and predict the behavior of consumers and businesses; Computer disaster recovery planning; Computer site design; Computer software development; computer programming services for others; application service provider services, namely, hosting computer software applications of others that feature employment job advertising, recruiting, hiring, personnel placement, staffing, job applicant tracking and screening, and outsourcing; computer services, namely, on-site and remote management of information technology (IT) systems of others and consulting services related thereto
; computer disaster recovery planning; computer site design(duplicative); on-site management and operation of information technology (IT) systems of others
Please let me know if applicant agrees to the amendments above.
If you have any questions, please contact me. I will be happy to assist you.
Sincerely,
Jesse Nelman
Trademark Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-0191 | jesse.nelman@uspto.gov
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