NOTE TO THE FILE
SERIAL NUMBER: 86108253
DATE: 02/14/2014
NAME: mdall
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:
From: Sean Mellino [mailto:smellino@dpeterhochberg.com]
Sent: Friday, February 14, 2014 11:19 AM
To: Lott, Maureen D.
Subject: RE: informal correspondence / app. nos. 86108253 and 86080932
Thank you!
Regards,
Sean F. Mellino
D. Peter Hochberg Co., L.P.A.
1940 East 6th Street - 6th Floor
Cleveland, Ohio 44114
Tel. (216) 771-3800 / Fax (216) 771-3804
Cell (216) 235-3087
Skype: sean.mellino
Email: smellino@dpeterhochberg.com
Website: www.dpeterhochberg.com
CONFIDENTIALITY NOTICE: This message is intended only for the addressee named above. It may contain information that is privileged, confidential or otherwise protected from use and disclosure. If you are not the intended recipient, you are hereby notified that any review, disclosure, copying or dissemination of the transmission contents, or other use, is strictly prohibited. Further, if you have received this message in error, we would appreciate your assistance by returning it to us. Please delete any message received in error, and do not make any backup copy. Thank you for your cooperation.
From: Lott, Maureen D. [mailto:Maureen.Lott@USPTO.GOV]
Sent: Friday, February 14, 2014 11:13 AM
To: Sean Mellino
Subject: RE: informal correspondence / app. nos. 86108253 and 86080932
Hi Sean,
I have provided some comments within your e-mail below. I hope they help.
Have a great weekend.
Sincerely,
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
From: Sean Mellino [mailto:smellino@dpeterhochberg.com]
Sent: Wednesday, February 12, 2014 12:02 PM
To: Lott, Maureen D.
Subject: RE: informal correspondence / app. nos. 86108253 and 86080932
Thanks!
Regards,
Sean F. Mellino
D. Peter Hochberg Co., L.P.A.
1940 East 6th Street - 6th Floor
Cleveland, Ohio 44114
Tel. (216) 771-3800 / Fax (216) 771-3804
Cell (216) 235-3087
Skype: sean.mellino
Email: smellino@dpeterhochberg.com
Website: www.dpeterhochberg.com
CONFIDENTIALITY NOTICE: This message is intended only for the addressee named above. It may contain information that is privileged, confidential or otherwise protected from use and disclosure. If you are not the intended recipient, you are hereby notified that any review, disclosure, copying or dissemination of the transmission contents, or other use, is strictly prohibited. Further, if you have received this message in error, we would appreciate your assistance by returning it to us. Please delete any message received in error, and do not make any backup copy. Thank you for your cooperation.
From: Lott, Maureen D. [mailto:Maureen.Lott@USPTO.GOV]
Sent: Tuesday, February 11, 2014 9:07 PM
To: Sean Mellino
Subject: RE: informal correspondence / app. nos. 86108253 and 86080932
Hi Sean,
I just wanted to confirm receipt of your e-mail. I will take a look and be back in touch shortly.
Sincerely,
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
From: Sean Mellino [mailto:smellino@dpeterhochberg.com]
Sent: Monday, February 10, 2014 1:33 PM
To: Lott, Maureen D.
Subject: informal correspondence / app. nos. 86108253 and 86080932
Dear Examiner Lott:
It was a pleasure speaking with you last week regarding these two referenced pending trademark applications. As we understand, the RETAINLY trademark application provides its software program to facilitate customer retention specifically focused towards customers with low engagement scores.
To contrast from RETAINLY, the Applicant’s services are geared more towards customer appreciation. The Applicant does not offer software, nor does the Applicant focus on specific customers such as those having low engagement scores.
Do you think any of the following amended wording might help to avoid the RETAINLY application?
RETAIN LLC (App. No. 86080932) - Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; Customer relationship management; all the foregoing in the nature of management of customer appreciation programs of others OR
Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; Customer relationship management; all the foregoing providing customer appreciation programs in the nature of personalized and customized gifts and print media
Maureen: The first ID is OK. I think the second ID is problematic because it almost appears to change the services to goods. BUT, I because a lot of entities are providing both marketing and advertising software as well as services, I’m still concerned there is a potential 2(d) issue.
RETAIN (& design) (App. No. 86108253) – (1) Helping businesses retain their customer loyalty in the nature of management of customer appreciation programs of others OR
(2) Helping businesses retain their customer loyalty by providing customer appreciation programs in the nature of personalized and customized gifts and print media
Maureen: The identification is unclear. It starts out as a service, but appears to change to goods. In this regard, it is unclear how a “program” can be gifts and print media. Perhaps the services feature things related to gifts or print media? Here is a suggestion: “helping businesses retain their customer loyalty, namely, customer loyalty services for commercial and advertising purposes featuring the use of personalized and customized gifts and featuring the use of print media for advertising purposes.”
I still have concerns regarding a likelihood of confusion. As noted above, many entities provide advertising-related software as well as related advertising services.
Thank you in advance. Any thoughts your comments you might have are greatly appreciated.
Regards,
Sean F. Mellino
D. Peter Hochberg Co., L.P.A.
1940 East 6th Street - 6th Floor
Cleveland, Ohio 44114
Tel. (216) 771-3800 / Fax (216) 771-3804
Cell (216) 235-3087
Skype: sean.mellino
Email: smellino@dpeterhochberg.com
Website: www.dpeterhochberg.com
CONFIDENTIALITY NOTICE: This message is intended only for the addressee named above. It may contain information that is privileged, confidential or otherwise protected from use and disclosure. If you are not the intended recipient, you are hereby notified that any review, disclosure, copying or dissemination of the transmission contents, or other use, is strictly prohibited. Further, if you have received this message in error, we would appreciate your assistance by returning it to us. Please delete any message received in error, and do not make any backup copy. Thank you for your cooperation.