NOTE TO THE FILE
SERIAL NUMBER: 76719159
DATE: 12/13/2016
NAME: ssettles
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT 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:
From: Lewis, Shaila E.
Sent: Tuesday, December 13, 2016 5:12 PM
To: 'bvosburg@fitzlaw.com' <bvosburg@fitzlaw.com>
Subject: U.S. Patent and Trademark Office Communication Re: U.S. Application Serial Nos. 76719159 and 76719161
Mr. Vosburg,
As we discussed today, the Disclaimer requirement and Section 2(d) refusals will have to be maintained and made final. The Section 2(d) refusal would have to remain as to all of the cited registrations related to clothing and bags because “accessories” for the “beach” are broad enough to encompass clothing and bags for the beach. It seemed, in your most recent response, that you were intending to exclude clothing and bags. However, to do so, the identification would have to be amended to clarify that the beach accessories do not include these items. If the “accessories” are home-related accessories, they would no longer be related to the clothing and bags.
Please let me know if you’d like to make this clarification, and if the applicant is willing to re-consider the disclaimer requirement in light of our conversation. I’m happy to hold off on a final refusal until Friday, December 16, 2016, at 12pm.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 114
(571) 270-1527 (office)
(571) 270-2527 (fax)