Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90151302

DATE:                                02/09/2022

NAME:                               cbuongiorno

NOTE:         

Searched:                                                             
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 X   OTHER:

 

 

From: Buongiorno, Christopher
Sent: Wednesday, February 9, 2022 12:08 PM
To: Simpson, Mark D. <Mark.Simpson@saul.com>
Subject: RE: S/N 90/151302 (ARM SYSTEMREADY CERTIFIED) (Saul Ewing No. 366219.00140)

 

Dear Mr. Simpson,

 

Applicant has not applied for a certification mark.  Therefore, the proposed wording “Certifying that specific instruction set architecture implementations of computer hardware and computer software conform with certification standards” is unacceptable.  If applicant wants to use the mark in connection with a certification service, it must file an new application for a certification mark. 

 

The following amendment to identification of goods and services is acceptable:

 

Downloadable electronic publications in the nature of electronic test certificates for certifying that the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes – Class 9;

 

Development of voluntary standards for the security of computer instruction set architectures, computer hardware and computer software for

compliant computer systems – Class 42;

 

Regulatory compliance consulting services relating to specific instruction set architecture implementations of computer hardware and computer

software for complaint computer systems – Class 45.

 

If applicant would like to adopt the suggested amendment, applicant may submit a request to the TTAB to remand the application to the examining attorney so that the amendment may be entered and the mark approved for publication.

 

Regards,

Christopher Buongiorno

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

 

 

 

From: Simpson, Mark D. <Mark.Simpson@saul.com>
Sent: Wednesday, February 9, 2022 10:11 AM
To: Buongiorno, Christopher <Christopher.Buongiorno@USPTO.GOV>
Cc: White, Lynn M. <Lynn.White@saul.com>
Subject: RE: S/N 90/151302 (ARM SYSTEMREADY CERTIFIED) (Saul Ewing No. 366219.00140)
Importance: High

 

CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.

 

 

Hi Examining Attorney Buongiorno – yesterday I received the denial of our Request for Reconsideration and the referral of the Appeal back to the Board.  I am hoping that we can still come to agreement on the language of the descriptions so that neither of us have to go through the appeal process.  Below is my summary of where I believe things stand, as well as my suggestions for resolution; I think the only remaining open issue is the first “clause” of Class 42.  Can you take a look at these and then, if you think it appropriate, have a short phone call with me (or email me) to discuss this further and hopefully work out any open issues?

 

 

Class 9

Downloadable electronic publications in the nature of electronic test certificates for certifying that the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes.  [ACCEPTABLE to Examining Attorney]

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Class 42

Testing, analyzing, and evaluating specific instruction set architecture implementations of computer hardware and computer software to determine conformity with certification standards; development of voluntary standards for the security of computer instruction set architectures, computer hardware and computer software for compliant computer systems  [Highlighted portion ACCEPTABLE to Examining Attorney]

Comments:  The unhighlighted portion in Class 42 was intended to cover with more detail (i.e., in a narrowing manner) the original recitation of “certification services.”  Would “Certifying that specific instruction set architecture implementations of computer hardware and computer software conform with certification standards” be acceptable?  This seems to me to be narrowing “Certification services” to something more specific.

 

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Class 45

Regulatory compliance consulting services relating to certifying that the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes [UNACCEPTABLE]

Regulatory compliance consulting services relating to specific instructions set architecture implementations of computer hardware and computer software for compliant computer systems. [ACCEPTABLE to Examining Attorney]

 

Thanks Examiner Attorney Buongiorno.

 

Best,

 

Mark