[E-trademarks] Or vs And in IDs

[Steve Zemanick]

Hello learned friends,

I have an office action stating the following:

"applicant has included the term "or" in the identification. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a)."

A quick scan of the cited TMEP section reveals no such "generally not accepted" language, nor anything directed to "or" vs "and."

In this case, the original ID is "downloadable or recorded computer software," which, in my mind, is more clear than "downloadable and recorded computer software" because the latter could either mean that one kind software was either both downloadable and recorded, or available for either download or as a recorded version.  The "or" version makes it clear the software is not both downloadable and recorded.

Am I all wet in thinking about challenging the Examiner on this one?

Seems like a waste of time in any case, but welcome other perspectives.

Steve Zemanick
Four Reasons Legal
8074 E 34th Ave
Denver, CO 80238
steve at fourreasonslegal.com<mailto:steve at fourreasonslegal.com>
720.937.6599

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