NOTE TO THE FILE
SERIAL NUMBER: 79254281
DATE: 05/02/2019
NAME: jblazich
NOTE:
Discussed file with
Attorney via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSI see! Thank you for the clarification.
Can we proceed with :
a) “non-metallic membranes, namely, waterproof sealants in the nature of waterproof coatings.”
b) “articles and packings of rubber used for vibration mitigation, namely, synthetic rubber packings in the nature of polychloroprene plates for use on any equipment generating vibration.”
These appear to be the closest to, and will maintain some consistency with the registration.
If possible, please issue an Examiner’s Amendment.
Thank you for all your help.
Janet G Ricciuti, Esq.
Attorney at Law
JANET GILBERT RICCIUTI PC
Intellectual Property Law
1830 S Street NW
Washington DC 20009
On May 2, 2019, at 2:10 PM, wrote:
Ms. Ricciuti,
Due to scope issues, both ID entries in question need to retain their original language. For the first entry, “non-metallic waterproof membranes, namely waterproof coatings,” an acceptable amendment would be “non-metallic waterproof membranes in the nature of waterproof sealants, namely, waterproof coatings” or “non-metallic membranes, namely, waterproof sealants in the nature of waterproof coatings.” For the second entry, the following would be acceptable: “articles and packings of rubber used for vibration mitigation, namely, synthetic rubber packings in the nature of polychloroprene plates for use on any equipment generating vibration.”
I was well aware of your client’s prior registration when I emailed you regarding the need to further amend the above-referenced ID entries. Your prior registration’s language for these items in Class 17 was acceptable because “waterproof sealants” and “synthetic rubber” are definite and properly classified items for Class 17.
Thank you.
Please note that although all relevant e-mail communications will be placed in the official application record, this email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Janet Ricciuti [mailto:ricciutij@comcast.net]
Sent: Thursday, May 02, 2019 1:36 PM
To: Subject: Re: SACRED #79254281
Dear ,
I have considered your below suggestions for Class 17 with the Applicant who reminded me of its ownership of Registration No. 4801742 for the word mark SACRED.
For consistency’s sake, would it be possible to amend the two items with which you have a problem, to that noted in the registration?
Below, I have identified the two goods needing amendment (A and B) and compared them to the same two goods noted in the registration (A and B).
SACRED & design: Application SN 79254281: Class 17:
Raw or semi-worked rubber, shock-absorbing buffers of rubber for automobile equipment, industrial machinery, laboratory equipment; waterproof packings for automobile equipment; packing, stopping in the nature of packing and insulating materials; flexible pipes not of metal; insulators for cables; materials for soundproofing and acoustic insulation materials; industrial insulating coatings; waterproof packings; A) non-metallic waterproof membranes, namely waterproof coatings; B) articles and packings of rubber used for vibration mitigation, namely, polychloroprene plates for use on any equipment generating vibration
SACRED (word mark): Registration No. 4801742: Class 17:
Rubber, raw or semi-worked; shock-absorbing rubber buffers for automobile equipment, industrial machinery, laboratory equipment; waterproof packings for automobile equipment; packing and insulating material; flexible pipes, not of metal; insulators for electrical cables; soundproofing and sound insulating materials; insulating coatings, namely, anti-vibratory insulating coating materials; A) waterproof sealants, namely, waterproof coatings; B) anti-vibration structures, namely, synthetic rubber in the form of polychloroprene plates for use on any equipment generating vibration
If this would be possible, please proceed with an Examiner’s Amendment.
Thank you!
Janet G Ricciuti, Esq.
Attorney at Law
JANET GILBERT RICCIUTI PC
Intellectual Property Law
1830 S Street NW
Washington DC 20009
On Apr 25, 2019, at 4:14 PM, wrote:
This email is intended for Janet Ricciuti
United States Trademark Application Serial No. 79254281
Dear Ms. Ricciuti,
I am the assigned trademark examining attorney for the above-referenced application. Thank you for your recent Response to Office Action. Your application will be ready to proceed once the identification of goods in Class 17 has been amended further. The specific issues are shown in bold font below. Once these issues have been resolved, I will issue an examiner’s amendment and proceed with your application accordingly. Thank you kindly for your time and attention in this matter.
Amended Identification of Goods
Class 17: Raw or semi-worked rubber, shock-absorbing buffers of rubber for automobile equipment, industrial machinery, laboratory equipment; waterproof packings for automobile equipment; packing, stopping in the nature of packing and insulating materials; flexible pipes not of metal; insulators for cables; materials for soundproofing and acoustic insulation materials; industrial insulating coatings; waterproof packings; non-metallic waterproof membranes, namely,
waterproof coatings[“waterproof coatings” is a Class 2 good and cannot be accepted here; “non-metallic insulating waterproof membranes” or “non-metallic waterproof membranes, namely, waterproof packings for automobile equipment, industrial machinery, and laboratory equipment” would be acceptable]; articles and packings of rubber used for vibration mitigation, namely, polychloroprene plates [this wording needs something additional to keep it definite and properly classified in Class 17, such as “being rubber buffers” or “being vibration insulating materials”] for use on any equipment generating vibrationClasses 12 and 25 are acceptable as written.
Please respond to this email by phone call or email by noon on Friday, 3 May 2019 with your response and/or if you have any questions about the application.
Thank you,
Please note that although all relevant e-mail communications will be placed in the official application record, this email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.