Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            85217933

DATE:                                11/04/2011

NAME:                               dstine

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 mailbox

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

 X   OTHER:

From: Stine, David
Sent: Friday, November 04, 2011 10:22 AM
To: 'Roberto Ledesma'
Subject: RE: U.S. TRADEMARK APPLICATION NO. 85217933 - CALIBER

Given the circumstances presented by this file, where multiple prior-filed, conflicting applications have been filed, suspension of prosecution, without formal consideration of argument at this time, is in full accord with Office practice.  See TMEP Section 716.02(c).  Applicant's arguments will be fully considered, and further action taken, at such time as all prior-filed applications have been resolved.  Piecemeal prosecution will not be engaged in by the PTO.

 

Unfortunately, the application is not ripe for appeal as no 2nd or final action has been taken regarding the stated Section 2(d) refusal and no formal refusal of registration has been issued with respect to the pending files.  If applicant wishes to submit further argument as to why the suspension should be lifted, this may be done in accordance with the instructions in the Suspension Notice.

 

It is your prerogative to file a petition if you feel that action taken by the Office is in some way improper or not in accordance with Office rules ; however, I don't see where anything not in full accord with applicable provisions of the statute, CFR and/or TMEP has occurred.

 

Unfortunately, given the circumstances presented by this case, applicant has no alternative but to be patient and wait for disposition of the prior-filed cases, or to file ex parte actions against such prior-filed applications/registrations, if deemed appropriate.

---

From: Roberto Ledesma [mailto:rl@everythingtrademarks.com]
Sent: Thursday, November 03, 2011 9:42 PM
To: Stine, David
Subject: U.S. TRADEMARK APPLICATION NO. 85217933 - CALIBER

David,

The Applicant wants you to address the arguments submitted in the October 11 response to office action and why you found them unpersuasive.  The pending CALIBER LUX application was recently allowed and it could be up to 3 years before final disposition on that application.  The Applicant does not want to (possibly) wait that long. 

Whether the CALIBER LUX application is added to the refusal or not the underlying issues remain the same -- so there really is no reason to wait.

Please explain what we need to do to have you address the merits and our arguments and whether the Applicant has the option to appeal the decision right now (to the Board or via Petition to the Director, etc.).  I checked the TMEP and the options are not clear.

Thank you,
Roberto Ledesma
www.EverythingTrademarks.com