Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90175134

DATE:                                03/09/2021

NAME:                               cbuongiorno

NOTE:         

Searched:                                                             
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     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
        email                               Attorney/Applicant

     Requested Law Library search           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:

 X   OTHER:

 

 

From: Buongiorno, Christopher
Sent: Tuesday, March 9, 2021 5:46 PM
To: Lyapis, Irina <ILyapis@winston.com>
Subject: RE: LEIASTREAM / Ser. No. 90175134 / 251183-01021

 

Dear Ms. Lyapis,

 

I have reviewed the proposed amendment.  Please see my comments below.

 

Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information;

 

downloadable computer software for use as an application programming interface (API);

 

downloadable computer software in the nature of an application programming interface (API) for downloadable computer software which facilitates online services for social networking, namely[,] building [term “building” is too vague—specify exactly what is meant by “building”] social networking applications and for allowing data retrieval, upload, download, access and management of photographs, images, audio-visual and video content;

 

downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, and sharing electronic media or information via computer and communication networks;

 

portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files;

 

computer hardware and software for use in searching, selecting, playing, streaming, and sharing television, movies, music, podcasts, computer games, images, and other audio, video, data, and multimedia content, and for use in searching, selecting, and using computer applications;

 

remote controls for use with portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files [wording “portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files” is indefinite--must state commercial descriptions of those items that the remotes controls are used in connection therewith, e.g., for operating vehicle alarms, televisions]” – Class 9;

 

Regards,

Christopher Buongiorno

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

From: Lyapis, Irina <ILyapis@winston.com>
Sent: Monday, March 8, 2021 12:02 PM
To: Buongiorno, Christopher <Christopher.Buongiorno@USPTO.GOV>
Cc: Franco, Laura <LFranco@winston.com>; Rea, Kirsten E. <KRea@winston.com>
Subject: FW: LEIASTREAM / Ser. No. 90175134 / 251183-01021

 

Hi Mr. Buongiorno,

 

In response to the Office Action issued for the LEIASTREAM application Ser. No. 90175134, we propose the following amendments to the identification of goods and services noted in red:

 

Class 9: Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; downloadable computer software for use as an application programming interface (API); downloadable computer software in the nature of an application programming interface (API) for downloadable computer software which facilitates online services for social networking, namely building social networking applications and for allowing data retrieval, upload, download, access and management of photographs, images, audio-visual and video content; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, and sharing electronic media or information via computer and communication networks; portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; computer hardware and software for use in searching, selecting, playing, streaming, and sharing television, movies, music, podcasts, computer games, images, and other audio, video, data, and multimedia content, and for use in searching, selecting, and using computer applications; remote controls for use with portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files

 

Class 38: Providing access to computer, electronic and online databases; providing online forums for communication, namely, transmission on topics of general interest; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; broadcast communications services, namely, electronic transmission of advertisements and media advertising, and uploading, posting, displaying, tagging, and electronically transmitting data, information, images and messages, all over computer or other communication networks; telecommunications services, namely, electronic transmission of data, information, images and messages; broadcasting, transmission, and streaming of voice, images, audio, video, digital media content, cable television, by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; subscription transmission services of streamed digital music, audio, video, and digital media content by means of telecommunications networks

 

If acceptable, we kindly request that an Examiner’s Amendment is entered.

 

Best,

Irina

 

Irina Lyapis

Associate Attorney

Winston & Strawn LLP 101 California Street San Francisco, CA 94111-5840

D: +1 415-591-1558

F: +1 415-591-1400

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