NOTE TO THE FILE
SERIAL NUMBER: 90151302
DATE: 04/27/2022
NAME: cbuongiorno
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
email Attorney/ApplicantRequested Law Library search 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:X OTHER:
From: Simpson, Mark D. <Mark.Simpson@saul.com>
Sent: Wednesday, April 27, 2022 9:16 AM
To: Buongiorno, Christopher <Christopher.Buongiorno@USPTO.GOV>
Subject: RE: U.S. Trademark Application Serial No. 90151302 - ARM SYSTEMREADY CERTIFIED - (On Appeal)
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Examining Attorney Buongiorno:
Thank you for your email and your suggestion for amendment. The amendment you propose to Class 45 is acceptable. Please enter this amendment by Examiner’s Amendment as you propose.
Please let me know if you have any questions.
Best,
Mark
Mark D. Simpson| Partner
Co-Chair, Intellectual Property Practice Group
SAUL EWING ARNSTEIN & LEHR LLP
1500 Market Street, 38th Floor | Philadelphia, PA 19102-2186
Tel: 215.972.7880 | Mobile: 609.304.5907
mark.simpson@saul.com | www.saul.com
Skype Name: mark.simpson.ip-law
From: Buongiorno, Christopher <Christopher.Buongiorno@USPTO.GOV>
Sent: Wednesday, April 27, 2022 8:26 AM
To: Simpson, Mark D. <Mark.Simpson@saul.com>
Subject: U.S. Trademark Application Serial No. 90151302 - ARM SYSTEMREADY CERTIFIED - (On Appeal)
**EXTERNAL EMAIL** - This message originates from outside our Firm. Please consider carefully before responding or clicking links/attachments.
Dear Mr. Simpson,
I have examined the request for reconsideration dated January 20, 2022.
The amendment to the identification of goods and services for Classes 9 and 42 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; [ACCEPTABLE]
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 – Class 42; [ACCEPTABLE]
The following amendment to Class 45 is unacceptable for the same reason stated in the February 8, 2022, Office action.
Regulatory compliance consulting services
relating to certifyingthat the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes – Class 45.
Applicant may adopt the following:
Regulatory compliance consulting services relating to specific instruction set architecture implementations of computer hardware and computer software for complaint computer systems – Class 45.
With your permission, I can enter the suggested amendment to Class 45 via an Examiner’s Amendment and approve the mark for publication.
If I do not receive a response to my e-mail by April 29th, I will need to issue an Office action and return the application to the Board to resume the appeal.
Warmest regards,
Christopher Buongiorno
United States Patent & Trademark Office
Law Office 102
(571) 272-9251