[E-trademarks] Or vs And in IDs

Wed Feb 12 17:06:38 UTC 2025

Also, it looks like the relevant section (that speaks specifically to the
"downloadable or recorded" issue is TMEP 1402.03(d):

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1400d1e2241.html

Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
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On Wed, Feb 12, 2025 at 12:03 PM Crane, Susan via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> How about just “downloadable software; recordable software” and eliminate
> the conjunction altogether.
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
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> Wyndham Hotels & Resorts, Inc.
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> Susan.Crane at wyndham.com
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>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Steve Zemanick via E-trademarks
> *Sent:* Wednesday, February 12, 2025 11:56 AM
> *To:* e-trademarks (e-trademarks at oppedahl-lists.com) <
> e-trademarks at oppedahl-lists.com>
> *Cc:* Steve Zemanick <Steve at fourreasonslegal.com>
> *Subject:* [E-trademarks] Or vs And in IDs
>
>
>
> 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
>
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> 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*
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