[E-trademarks] Or vs And in IDs

[Sam Castree]

Dear Steve,

Personally, I hate that we even have to specify recorded vs. downloadable
software at this point.  But is this part of a curly-bracket,
fill-in-the-blank entry?  Or a free form?  Normally, I just use the
individual, separate entries for "recorded software" and "downloadable
software" from the Manual.  That would avoid the whole problem, if possible.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*


On Wed, Feb 12, 2025 at 10:58 AM Steve Zemanick via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> 720.937.6599
>
>
>
>
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