[E-trademarks] [EXT] Re: Or vs And in IDs

Wed Feb 12 21:13:04 UTC 2025

I remember being told as an examiner that the conjunctive AND is considered more specific by the USPTO than the disjunctive OR. I never checked to see if that made it into the TMEP – I guess not. I think the thinking is that A and B are two specific things and nothing else while A or B is not necessarily one or the other and is somehow more ambiguous.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG<https://www.dbllawyers.com/>
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
[A blue and white logo  Description automatically generated]
[cid:image002.png at 01DB7D68.FC013550]<https://www.dbllawyers.com/empowering-innovators/>
This electronic message contains information from Dunlap Bennett & Ludwig PLLC and may be confidential or privileged. If you are not the intended recipient, any disclosure, copying, or use of the contents is prohibited. If you have received this e-mail in error, please notify us and delete the message without copying or disclosing it.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Steve Zemanick via E-trademarks
Sent: Wednesday, February 12, 2025 12:55 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Steve Zemanick <Steve at fourreasonslegal.com>; Edward Timberlake <ed at timberlakelaw.com>
Subject: [EXT] Re: [E-trademarks] Or vs And in IDs

Thanks Ed, but there is absolutely nothing in that section to justify the objection either.

Thank you also to Susan, Ronni and Sam, good idea on separating them out.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Edward Timberlake via E-trademarks
Sent: Wednesday, February 12, 2025 10:07 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Edward Timberlake <ed at timberlakelaw.com<mailto:ed at timberlakelaw.com>>
Subject: Re: [E-trademarks] Or vs And in IDs

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>
ed at timberlakelaw.com<mailto:ed at timberlakelaw.com>
919.960.1950

[https://ci3.googleusercontent.com/mail-sig/AIorK4zUm0zjuSoSf91b85RXakFjrbAqMcNkJek2_S8VO9eHNz9mDAX5u3RBN0aEhVODltVLqRN-NYsDzt7A]

On Wed, Feb 12, 2025 at 12:03 PM Crane, Susan via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>) <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Steve Zemanick <Steve at fourreasonslegal.com<mailto: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
ZjQcmQRYFpfptBannerStart
This Message Is From an External Sender
Do not click links or open attachments unless you recognize the sender and know the content is safe.
    Report Suspicious  <https://us-phishalarm-ewt.proofpoint.com/EWT/v1/Nf401RNTQFE14GfWW3o!kEaL69ENw0E7IMs3ehMH36cKR102dVNk7EG79W_NfN-Jj0a4LszbJr0GZJwKsVlgr-xB9zBkx_YM6zoyfAlO6OQUe232W9KnqgKjkJRInY5hePh1AUc7gMfzgMNIfWibZlJN86TK6DFN-Q$>   ‌
ZjQcmQRYFpfptBannerEnd
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

CONFIDENTIAL COMMUNICATION
Communication from this firm normally contains confidential and privileged material, and is for the sole use of the intended recipient.  Use or distribution by an unintended recipient is prohibited, and may be a violation of law. If you believe that you received this in error, please do not read it or any attachments.  Please delete the communication and its attachments, and any copies that may exist, and inform the sender that you have done so. Thank you.

This email message (including all attachments) is for the sole use of the intended recipient(s) and may contain confidential information. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. Unless otherwise indicated in the body of this email, nothing in this communication is intended to operate as an electronic signature and this transmission cannot be used to form, document, or authenticate a contract. Wyndham Hotels and Resorts and/or its affiliates may monitor all incoming and outgoing email communications in the United States, including the content of emails and attachments, for security, legal compliance, training, quality assurance and other purposes.
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250212/d25993e3/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 34793 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250212/d25993e3/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 160153 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250212/d25993e3/attachment-0001.png>