NOTE TO THE FILE
SERIAL NUMBER: 79239595
DATE: 06/20/2019
NAME: mtully
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X 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
X Changed TRADEUPS to: entered city, state, and zip code into proper fieldsX OTHER:
From: Diane B. Melnick [mailto:dbmelnick@powleygibson.com]
Sent: Thursday, June 20, 2019 3:55 PM
To: Tully, Matthew <Matthew.Tully@USPTO.GOV>
Subject: FW: U.S. Trademark Application No. 79239595 -- KODAK
Hi Matt:
It was a pleasure to speak to you today. The proposed amendment is acceptable, as is the standard character statements indicated below.
We look forward to receiving the Examiner’s Amendment in due course.
Thanks very much for your assistance with the amendments.
Kind regards,
Diane
POWLEY & GIBSON, p.c.
304 Hudson Street, Suite 305
New York, New York 10013
p (212) 226 - 5054 x304
f (212) 226 - 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.
From: Tully, Matthew [mailto:Matthew.Tully@USPTO.GOV]
Sent: Monday, June 17, 2019 5:33 PM
To: Diane B. Melnick <dbmelnick@powleygibson.com>
Subject: RE: U.S. Trademark Application No. 79239595 -- KODAK
Diane:
Thanks for getting back to me.
Unfortunately, portions of the proposed amendment remain indefinite. Specifically, the introductory language “Ready-made clothing, headwear and footwear of all kinds namely” makes certain goods that follow indefinite—for example: “Ready-made … footwear of all kinds namely, suits”. Thus, I rearranged this whole first clause in the proposal below, separating “Ready-made clothing of all kinds”, “ready-made headwear of all kinds”, and “ready-made footwear of all kinds”.
Further, after taking a second look, I see that “caps” by itself is indefinite and must be further clarified.
Here is my proposed amendment in full:
Class 25: Ready-made clothing of all kinds, namely, suits, pants, trousers, shorts, jeans, bottoms, leggings, sports pants, sweatpants, overalls, blazers, tops, t-shirts, shirts, sweatshirts, jerseys being activewear, hoodies, jackets, vests, coats, rainwear, dresses, skirts, knitwear, jumpsuits, infantwear, underwear, lingerie, corsets being clothing, sleepwear, loungewear, swimwear, beachwear, gloves, socks, hosiery, bandanas, belts, scarves, neckties, pocket squares, handkerchiefs; ready-made headwear of all kinds, namely, hats and caps; ready-made footwear of all kinds, namely, shoes, slippers, sneakers, sandals, boots, and flip-flops; shoes; underwear; lingerie; corsets being clothing; gloves; hosiery; hats; caps being headwear; headwear; slippers; sneakers; sandals; boots; flip-flops
In addition, just to be clear on the standard character issue, as this is a 66(a) application, do you authorize me to place the following statements into the record?:
(1) Under the laws of the country of the basic application and/or registration, the basic application and/or registration includes, and thus the international registration includes, the legal equivalent of a standard character claim.
(2) The mark consists of standard characters without claim to any particular font style, size, or color .
If this all looks good to you, I will be able to enter the amendments by EA and approve the mark for publication.
Thanks, and please let me know when you get a chance.
Best,
Matt