Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90792707

DATE:                                03/24/2022

NAME:                               ekelley1

NOTE:         

Searched:                                                             
     Google                            
     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
    X   email                               Attorney/Applicant

     Requested Law Library search       X   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:

     OTHER:

 

From: Tyler, Kayla <Kayla.Tyler@DINSMORE.COM>
Sent: Thursday, March 24, 2022 12:19 PM
To: Kelley, Evelyn <Evelyn.Kelley@USPTO.GOV>
Cc: DSMSTrademarks <DSMSTrademarks@Dinsmore.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>; Frey, Michael <michael.frey@dinsmore.com>
Subject: RE: United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

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

 

Ms. Kelley,

 

Thank you for your patience. We are aligned with your proposed alternations below. As such, please proceed with entering the Examiner’s Amendment.

 

We appreciate your assistance with this matter. Thank you!

 

Best,

 

Kayla Tyler

Kayla M. Tyler
Associate
Dinsmore & Shohl LLP  •  Legal Counsel
191 West Nationwide Blvd
Suite 300
Columbus, OH 43215
T (614) 227-4219  •  F (614) 628-6890
E Kayla.Tyler@DINSMORE.COM  •  dinsmore.com 

From: Kelley, Evelyn <Evelyn.Kelley@USPTO.GOV>
Sent: Tuesday, March 22, 2022 7:43 PM
To: Tyler, Kayla <Kayla.Tyler@DINSMORE.COM>
Cc: DSMSTrademarks <DSMSTrademarks@Dinsmore.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>; Frey, Michael <michael.frey@dinsmore.com>
Subject: RE: United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

Good Evening,

 

If I can propose a small alteration to the specified matter in Class 9:

 

Class 9: Recorded software for the automatic configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software; recorded software for use in connection with the transmission of voice and data; downloadable computer programming software and downloadable computer development software, namely, software development tools for the creation of software applications; downloadable multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; voice-activated software, namely, downloadable software for controlling stand-alone voice controlled information devices comprised of cloud-connected and voice-controlled information devices; recorded computer operating system software; downloadable operating system software sold as a component of computers; downloadable computer software for creating, uploading, and sharing 3D images and models; downloadable software for manipulating, improving, providing and supporting 4K resolution, High Dynamic Range (HDR) capabilities, true color rendering, environmental contrast, and brightness adaptation for electronic screens and displays; downloadable computer software for creating graphics and using visual image technology in augmented reality and virtual reality; downloadable malware protection software; downloadable software for securing access to laptops, phones, and computers; downloadable facial recognition software; downloadable fingerprint recognition software; downloadable iris recognition software; downloadable software that enables a user to hand-write notes and text with a digital pen onto touch-enabled devices; downloadable software that interprets hand-written content on touch-enabled devices; downloadable computer software for creating, editing, uploading and sharing digital drawing; downloadable software that allows for annotations to image via digital ink; downloadable software for connecting a smartphone or tablet computer to a monitor, mouse, and keyboard and project the desktop to the monitor; recorded computer software for playing video and electronic games and computer games; recorded computer software for storing, accessing and synchronizing documents, photos and data; a full line of downloadable business and home computer programs for business operations, business management, accounting, productivity management and marketing in the fields of business, household management, and computer e-commerce applications software for allowing users to perform electronic business transactions via a global computer network for home and business use; recorded computer programs, namely, word processing programs, address book programs, calculator programs, programs for downloading and playing audio and video, programs for managing computer power supplies, programs for use in transmitting data between computers and other electronic devices, computer maintenance programs, programs for providing enhanced special effects while running game programs, programs for use in accessing and playing CDs and DVDs, browser programs, accessibility programs to make computers more useful for persons with disabilities, paint programs for use in creating, editing and coloring drawings, electronic mail programs, programs for electronic conferencing, programs for note-taking, programs for managing email accounts, passwords, calendars and contacts; downloadable computer operating system programs and downloadable computer utilities programs for performing computer maintenance; computers; laptops; tablet computers; removable hard drive based computer backup and storage systems; computer peripherals; carrying cases for computers, laptops, tablet computers, mobile phones, smartglasses; web cameras; protective covers and cases for computers, laptops, tablet computers, mobile phones, smartglasses; computer servers; portable electronic devices, namely, mobile computers, handheld computers, laptops, tablet computers, mobile phones

 

 

Best,

Evelyn Kelley

 

Evelyn R. Kelley, Esq.

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 127

Phone: (571) 270-7321

evelyn.kelley@uspto.gov

_________________________________________

Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

From: Tyler, Kayla <Kayla.Tyler@DINSMORE.COM>
Sent: Tuesday, March 22, 2022 6:20 PM
To: Kelley, Evelyn <Evelyn.Kelley@USPTO.GOV>
Cc: DSMSTrademarks <DSMSTrademarks@Dinsmore.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>; Frey, Michael <michael.frey@dinsmore.com>
Subject: RE: United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

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

 

United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

Dear Ms. Kelley,

 

We are in receipt of your email regarding the proposed Examiner’s Amendment for the above-referenced mark. Our client is prepared to grant permission to enter an Examiner’s Amendment with the changes noted in your email, but has first requested minor amendments to the proposed language in Class 9, as described below:

 

Class 9: Recorded software for the automatic configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software; recorded software for use in connection with the transmission of voice and data; recorded downloadable computer programming software and recorded downloadable computer development software, namely, software development tools for the creation of software applications; recorded downloadable multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; voice-activated software, namely, downloadable software for controlling stand-alone voice controlled information devices comprised of cloud-connected and voice-controlled information devices; recorded computer operating system software; recorded downloadable operating system software sold as a component of computers; downloadable computer software for creating, uploading, and sharing 3D images and models; recorded downloadable software for manipulating, improving, providing and supporting 4K resolution, High Dynamic Range (HDR) capabilities, true color rendering, environmental contrast, and brightness adaptation for electronic screens and displays; recorded downloadable computer software for creating graphics and using visual image technology in augmented reality and virtual reality; downloadable malware protection software; downloadable software for securing access to laptops, phones, and computers; downloadable facial recognition software; downloadable fingerprint recognition software; downloadable iris recognition software; downloadable software that enables a user to hand-write notes and text with a digital pen onto touch-enabled devices; downloadable software that interprets hand-written content on touch-enabled devices; downloadable computer software for creating, editing, uploading and sharing digital drawing; downloadable software that allows for annotations to image via digital ink; downloadable software for connecting a smartphone or tablet computer to a monitor, mouse, and keyboard and project the desktop to the monitor; recorded computer software for playing video and electronic games and computer games; recorded computer software for storing, accessing and synchronizing documents, photos and data; a full line of recorded downloadable business and home computer programs for {indicate the function of the software} business, business management, accounting, productivity and marketing in the fields of business, household management, and computer e-commerce applications software for allowing users to perform electronic business transactions via a global computer network for home and business use; recorded computer programs, namely, word processing programs, address book programs, calculator programs, programs for downloading and playing audio and video, programs for managing computer power supplies, programs for use in transmitting data between computers and other electronic devices, computer maintenance programs, programs for providing enhanced special effects while running game programs, programs for use in accessing and playing CDs and DVDs, browser programs, accessibility programs to make computers more useful for persons with disabilities, paint programs for use in creating, editing and coloring drawings, electronic mail programs, programs for electronic conferencing, programs for note-taking, programs for managing email accounts, passwords, calendars and contacts; recorded downloadable computer operating system programs and recorded downloadable computer utilities programs for performing computer maintenance; computers; laptops; tablet computers; removable hard drive based computer backup and storage systems; computer peripherals; carrying cases for computers, laptops, tablet computers, mobile phones, smartglasses; web cameras; protective covers and cases for computers, laptops, tablet computers, mobile phones, smartglasses; computer servers; portable electronic devices, namely, mobile computers, handheld computers, laptops, tablet computers, mobile phones

 

As you can see, our client has requested to replace the proposed insertions of “recorded” with “downloadable” as the clarifying term. Further, we have provided the additional specificity which you requested in the brackets above. With regard to the remaining Classes, your proposed amendments are acceptable as written.

 

Should you find the above Class 9 revisions acceptable, you may proceed with entering an Examiner’s Amendment with the changes noted above and in your initial email.

 

We appreciate your assistance and look forward to hearing from you.

 

Thank you,

 

Kayla Tyler

 

Kayla M. Tyler
Associate
Dinsmore & Shohl LLP  •  Legal Counsel
191 West Nationwide Blvd
Suite 300
Columbus, OH 43215
T (614) 227-4219  •  F (614) 628-6890
E Kayla.Tyler@DINSMORE.COM  •  dinsmore.com 

 

From: Kelley, Evelyn <Evelyn.Kelley@USPTO.GOV>
Sent: Sunday, March 20, 2022 12:41 PM
To: Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
Cc: DSMSTrademarks <DSMSTrademarks@Dinsmore.com>; MSDocketing@Dinsmore.com; Crigler, Stephanie <Stephanie.Crigler@DINSMORE.COM>; Priebe, Karen <Karen.Priebe@DINSMORE.COM>
Subject: United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

This email is intended for Karen Kreider Gaunt and /or any authorized party

 

United States Trademark Application Serial No. 90792707 / Attorney Docket No. 128291-4

 

Dear Ms. Gaunt;

 

I am the assigned trademark examining attorney for the above-referenced application.  The application will be ready to proceed if the applicant agrees to the following:

 

Identification of Goods and Services:

 

Class 9: Recorded software for the automatic configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software; recorded software for use in connection with the transmission of voice and data; recorded computer programming software and recorded computer development software, namely, software development tools for the creation of software applications; recorded multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; voice-activated software, namely, downloadable software for controlling stand-alone voice controlled information devices comprised of cloud-connected and voice-controlled information devices; recorded computer operating system software; recorded operating system software sold as a component of computers; downloadable computer software for creating, uploading, and sharing 3D images and models; recorded software for manipulating, improving, providing and supporting 4K resolution, High Dynamic Range (HDR) capabilities, true color rendering, environmental contrast, and brightness adaptation for electronic screens and displays; recorded computer software for creating graphics and using visual image technology in augmented reality and virtual reality; downloadable malware protection software; downloadable software for securing access to laptops, phones, and computers; downloadable facial recognition software; downloadable fingerprint recognition software; downloadable iris recognition software; downloadable software that enables a user to hand-write notes and text with a digital pen onto touch-enabled devices; downloadable software that interprets hand-written content on touch-enabled devices; downloadable computer software for creating, editing, uploading and sharing digital drawing; downloadable software that allows for annotations to image via digital ink; downloadable software for connecting a smartphone or tablet computer to a monitor, mouse, and keyboard and project the desktop to the monitor; recorded computer software for playing video and electronic games and computer games; recorded computer software for storing, accessing and synchronizing documents, photos and data; a full line of recorded business and home computer programs for {indicate the function of the software} for home and business use; recorded computer programs, namely, word processing programs, address book programs, calculator programs, programs for downloading and playing audio and video, programs for managing computer power supplies, programs for use in transmitting data between computers and other electronic devices, computer maintenance programs, programs for providing enhanced special effects while running game programs, programs for use in accessing and playing CDs and DVDs, browser programs, accessibility programs to make computers more useful for persons with disabilities, paint programs for use in creating, editing and coloring drawings, electronic mail programs, programs for electronic conferencing, programs for note-taking, programs for managing email accounts, passwords, calendars and contacts; recorded computer operating system programs and recorded computer utilities programs for performing computer maintenance; computers; laptops; tablet computers; removable hard drive based computer backup and storage systems; computer peripherals; carrying cases for computers, laptops, tablet computers, mobile phones, smartglasses; web cameras; protective covers and cases for computers, laptops, tablet computers, mobile phones, smartglasses; computer servers; portable electronic devices, namely, mobile computers, handheld computers, laptops, tablet computers, mobile phones

 

Class 16: Printed publications, namely, user manuals, training manuals, teaching materials, instruction guides, reference guides, newsletters, magazines, books, all of the foregoing in the fields of computers, computer networks, computer systems, computer programs, computer software design, business management, information technology, machine learning, artificial intelligence, data analytics, cloud computing, cybersecurity, mobile computing and apps for mobile phones, video games and computer games

 

Class 35: Online retail store services featuring a wide variety of consumer goods of others; online retail store services featuring computers, computer hardware, computer peripherals, laptops, tablets, portable music players, personal digital assistants, cell phones, digital media streaming devices, computer software, applications for personal computers, video game consoles, video game controllers, video games, gaming software, gaming equipment, security services, downloadable movies and television shows, webcams, books, clothing, back packs, messenger bags, computer bags, notebooks, journals, laptop sleeves, stickers, pens, pencils, toys, gift cards and novelty items; conducting trade shows and exhibitions in the field of computers, computer networks, computer systems, computer programs, computer software design, business management, information technology, machine learning, artificial intelligence, data analytics, cloud computing, cybersecurity, mobile computing and apps for mobile phones, video games and computer games

 

Class 38: Telecommunication services for providing multiple-user access to a global computer network; telecommunications services, namely, offering personal communications services via wireless networks; electronic transmission of email; instant messaging services; providing voice chat services; streaming of audio and video content via a global computer network; electronic transmission of messages, documents, images, music, games and data

 

Class 39:  MISCLASSIFIED, SEE CLASS 42

 

Class 41: Entertainment services, namely, providing an Internet website portal featuring interactive information and links relating to entertainment news, music, movies, video, games, news, sports, weather, traffic via a website and taskbar; entertainment services, namely, providing entertainment, sports, music, news, and current events continuing programs by means of telecommunications networks, computer networks, the internet, satellite, radio, wireless communications networks, television, and cable television; education services, namely, arranging, organizing, conducting, and presenting educational seminars, workshops, classes, non-downloadable webinars, educational conferences, online instruction, online tutorials, and distance learning programs, all in the field of technology, productivity, computing, computers, computer networks, computer systems, computer programs, computer software design, business management, information technology, machine learning, artificial intelligence, data analytics, cloud computing, cybersecurity, mobile computing and apps for mobile phones, video games and computer games

 

Class 42: Software as a service (SaaS) services featuring software for operating networked computers; software as a service (SaaS) services featuring software for security, user authentication, password and log in management and protection; software as a service (SaaS) services featuring software for use in connection with task management and tracking workflow and business information; computer services, namely, remote hosting of operating systems

for others; computer services, namely, remote hosting of computer applications of others; computer services, namely, providing software updates via computer networks and global communication networks; providing technical information in the fields of computer hardware, computer software, computer operating systems, cloud computing, database and web applications, all offered via computer networks and global communications networks; providing online non-downloadable computer programs for accessing global communication networks; providing on-line non-downloadable computer software programs accessible over a global computer network for managing computer applications; providing online non-downloadable computer software programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable computer software programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, making presentations, storytelling, business intelligence, database management, and productivity; providing online non-downloadable computer programs for downloading, streaming, and playing music, audio, videos and internet radio broadcasts; Electronic storage of files, documents, and data

 

Class 45: Licensing of computer programs and computer software; online social networking services

 

Please let me know whether I have your permission to enter an Examiner’s Amendment with the changes noted above and approve the mark for publication.

 

Thank you, and I look forward to hearing from you.