NOTE TO THE FILE
SERIAL NUMBER: 85831829
DATE: 09/05/2013
NAME: dlobo
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
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Changed TRADEUPS to:X OTHER: The Section 2(d) refusal is withdrawn based on cancellation of the cited registration.
From: Demm, Stephen [mailto:sdemm@hunton.com]
Sent: Wednesday, September 04, 2013 6:10 PM
To: Lobo, Deborah
Cc: Demm, Stephen; Burner, Sandi
Subject: Diversey, Inc.'s Application to Register BLAST Trademark (App Ser No 85831829)
Importance: High
Dear Ms. Lobo:
I am writing to follow up on the voice mails that I just left you about our client, Diversey, Inc.’s, application to register the BLAST trademark (Application Serial No. 85831829).
You issued an Office Action for this application on March 6, 2013, raising one issue: a purported likelihood of confusion with a prior registration of a BLAST trademark (Registration No. 0946964). A copy of your Office Action is attached above for easy reference.
Also attached above is the PTO printout for the prior registration that you cited (Registration No 0946964). Based on the PTO records, it appears that the cited registration was last renewed, for a 10-year renewal period, effective November 7, 2002. As a result, the “due date” for renewing the cited BLAST registration was November 7, 2012, and the grace period for renewing the cited BLAST registration expired on May 7, 2013. The PTO records do not show that any renewal filing was made for the cited registration.
As a result, it appears that the cited prior registration is no longer valid, should be cancelled, and should be removed as a potential obstacle to Diversey’s application to register its BLAST mark. And since that cited prior registration was the only issue raised in the your Office Action, it appears that Diversey’s application should be approved for publication.
We can file a formal Response to your Office Action stating this, but given the circumstances, I was hoping that we could resolve this by call or email.
I would appreciate hearing back from you, by phone or by email, at you earliest convenience.
Thank you, and best regards,
Steve Demm
Counsel for the Applicant Diversey, Inc.
Tel – 804 788 8331
Email – sdemm@hunton.com