NOTE TO THE FILE
Sent to TICRS as Serial Number: 90326932SERIAL NUMBER: 90326941
DATE: 05/07/2021
NAME: jschmidt2
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
X 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:X OTHER:
From: Cornuelle, Kristin <kcornuelle@orrick.com>
Sent: Friday, May 7, 2021 12:21 PM
To: Schmidt, John <John.Schmidt@USPTO.GOV>; IP Prosecution <ipprosecution@orrick.com>; Weddington, Marley K. <mweddington@orrick.com>
Cc: Cornuelle, Kristin <kcornuelle@orrick.com>; Vicino, Carolyn <cvicino@orrick.com>
Subject: RE: US PATENT AND TRADEMARK APPLICATION SERIAL NOS. 90326932, 90326936, 90326941 BUSINESS CLASS
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Hi John –
The applicant has confirmed that you may enter a disclaimer of “BUSINESS CLASS” and has approved the amendments as outlined below:
Serial No. 90326932:
Class 09 - Downloadable e-books in the field of business; Downloadable digital videos, audio and related digital content in the nature of downloadable multimedia files in the field of business; Downloadable books, manuals and guides in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
Serial No. 90326936
Class 16 - Printed books in the field of business; printed interactive activity books in the field of business; printed training books, guides and manuals in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
Serial No. 90326941
Class 41 - Educational services, namely, providing online instruction in the field of business via an online website and distribution of course material in connection therewith; Educational services, namely, providing online classes, workshops and educational video conferences in the field of business; Continuing education services, namely, providing live and online continuing professional education seminars in the field of business; Providing online non-downloadable e-books in the field of business; Providing a website featuring non-downloadable videos and audio files in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
Please let me know if you need anything else or feel free to issue examiner’s amendments to the applications at your convenience.
Thank you so much and have a nice weekend!
Best, Kristin
/Kristin S. Cornuelle/
Kristin S. Cornuelle, Attorney of record, CA and OR bar member
Attorney
T +1-503-943-4828
kcornuelle@orrick.com
From: Schmidt, John <John.Schmidt@USPTO.GOV>
Sent: Tuesday, May 4, 2021 7:42 AM
To: IP Prosecution <ipprosecution@orrick.com>; Cornuelle, Kristin <kcornuelle@orrick.com>; Weddington, Marley K. <mweddington@orrick.com>
Subject: US PATENT AND TRADEMARK APPLICATION SERIAL NOS. 90326932, 90326936, 90326941 BUSINESS CLASS
Hello,
I am the Trademark Examining Attorney assigned to these applications and I am writing concerning a few issues.
First, for all of these marks, “BUSINESS CLASS” must be disclaimed as descriptive of the goods and services.
The identifications must be amended for each application to clarify the subject matter and other specifics of the goods and services. The following is suggested:
Serial No. 90326932:
Class 09 - Downloadable e-books in the field of business; Downloadable digital videos, audio and related digital content in the nature of (applicant to clarify, e.g. downloadable multimedia files, etc.) in the field of business; Downloadable books, manuals and guides in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
Serial No. 90326936
Class 16 - Printed books in the field of business; printed interactive activity books in the field of business; printed training books, guides and manuals in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
Serial No. 90326941
Class 41 - Educational services, namely, providing online instruction in the field of business via an online website and distribution of course material in connection therewith; Educational services, namely, providing online classes, workshops and educational video conferences in the field of business; Continuing education services, namely, providing live and online continuing professional education seminars in the field of business; Providing online non-downloadable e-books in the field of business; Providing a website featuring non-downloadable videos and audio files in the field of business; none of the aforementioned relating to Canadian legal, patent and trademark matters
With your permission, I can amend the applications as suggested. If I do not hear from you by FRIDAY, MAY 7, 2021, I will send out an Office Action with these requirements.
Best,
/John Schmidt/
Trademark Examining Attorney, Law Office 119
United States Patent and Trademark Office
(571) 272-7082