NOTE TO THE FILE
SERIAL NUMBER: 77966475
DATE: 09/28/2010
NAME: syoung
NOTE:
From: Young, Skye
Sent: Tuesday, September 28, 2010 11:59 AM
To: 'George, Tally'
Subject: RE: Trademark Serial No. 77966475 (Mark: ENRICH )
Good morning Tally,
“Travel Information” services in Class 39 are explicitly limited to information regarding transport services, i.e. the movement of persons or things. As broadly as the wording may be in common speech, in the fed. trademark classification arena, it does not include information about lodging (Cl. 43), the business aspects of travel (Cl. 35), security in travel (Cl. 45), etc. by inference.
In keeping with your suggestions, the following is acceptable.
Providing travel lodging information services for travelers, regarding holiday accommodation – Class 43
With your permission, I will enter an examiner’s amendment.
Regards,
Skye
C. Skye Young
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
Ph: (571) 272-9713
From: George, Tally [mailto:Tally.George@bakermckenzie.com]
Sent: Monday, September 27, 2010 8:48 PM
To: Young, Skye
Subject: RE: Trademark Serial No. 77966475 (Mark: ENRICH )
Dear Examiner Young,
Thank you for your inquiry. We mirrored the description in the Applicant’s other recently registered mark, Reg. No. 3782336. While we understand that each application is different, as are Examiners, the objected to wording made it past the review panel previously. Also, the objected to wording seems no less broad than Class 39 wording directly from the Manual, namely “Provision of travel information.” Finally, regarding the proposed amendment, I don’t know that the services are provided only via the Internet (as opposed to at airport terminals), or specifically personalized (as opposed to general information).
That being the case, can we simply amend to (the italicized being from the Manual):
Providing travel lodging information services for travelers
Or
Providing travel lodging information services for travelers, regarding holiday accommodation.
Thank you for your consideration.
Regards,
Tally
(Ms.) M. Tally George ("Tally")
Baker & McKenzie LLP - Chicago
Tel: +1 312 861 2585
Fax: +1 312 698 2699
General IP Fax: +1 312 698 2937
NOTE MY NEW EMAIL ADDRESS:tally.george@bakermckenzie.com
From: Young, Skye [mailto:Skye.Young@USPTO.GOV]
Sent: Monday, September 27, 2010 7:21 PM
To: Bertagnolli, Leslie A; George, Tally
Subject: RE: Trademark Serial No. 77966475 (Mark: ENRICH )
Thank you for the advance authorization. I will listen out for a word.
Regards,
C. Skye Young
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
Ph: (571) 272-9713
From: Bertagnolli, Leslie A [mailto:Leslie.Bertagnolli@bakermckenzie.com]
Sent: Monday, September 27, 2010 8:19 PM
To: Young, Skye; George, Tally
Subject: RE: Trademark Serial No. 77966475 (Mark: ENRICH )
Tally George, the associate here who has been working on the matter, will check with the applicant and then respond to you. Thank you for your call.
Leslie Bertagnolli
Partner
Baker & McKenzie LLP
One Prudential Plaza, Suite 3500
130 E. Randolph Drive
Chicago, IL 60601, USA
Tel: +1 312 861 8617
Fax: +1 312 698 2064
NOTE MY NEW EMAIL ADDRESS:
leslie.bertagnolli@bakermckenzie.com
Baker & McKenzie LLP is a member of Baker & McKenzie International, a Swiss Verein
From: Young, Skye [mailto:Skye.Young@USPTO.GOV]
Sent: Friday, September 24, 2010 7:30 PM
To: Bertagnolli, Leslie A
Subject: Trademark Serial No. 77966475 (Mark: ENRICH )Trademark Serial No. 77966475 (Mark: ENRICH )
INFORMAL CORRESPONDENCE
Hello Ms. Bertagnolli:
I just received your response to office action with respect to the above application. Unfortunately, we have one small outstanding issue that precludes me from approving this file for publication. Given the nature of the requirement, I am hoping that we can resolve this informally via email or phone.
The following wording in Class 43 remains indefinite: “services for the provision of information relating to holiday accommodation.” This wording is broad for it may include services in additional classes e.g. “providing hotel rate comparison information” in Class 35.
If you would like to maintain the intended service in Class 43, I suggest the following amended identification:
Providing personalized information about hotels and temporary accommodations for travel via the Internet – Class 43
Please respond back to this email with your acceptance of the wording or new suggested language. When this is resolved, I will issue an Examiner’s Amendment to update our database and move the file forward to publication. Should you need additional time, please let me know and I will issue a final office action giving you an additional 6 months to respond.
Best regards,
C. Skye Young
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
Ph: (571) 272-9713
Pursuant to requirements related to practice before the Internal Revenue Service, any tax advice contained in this communication (including any attachments) is not intended to be used, and cannot be used, for the purposes of (i) avoiding penalties imposed under the United States Internal Revenue Code or (ii) promoting, marketing or recommending to another person any tax-related matter.
This message may contain confidential and privileged information. If it has been sent to you in error, please reply to advise the sender of the error and then immediately delete this message. Please visit www.bakermckenzie.com/disclaimers for other important information concerning this message.