Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            86306516

DATE:                                04/29/2016

NAME:                               chiser

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

     Checked list of approved Canadian attorneys and agents

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

     Requested Law Library search       X   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:

Thanks.  Then lets forget Class 8 and use the items you previously selected.

 

Best,

 

Mike

 

Michael J. Salvatore, Esq.

Holmes Weinberg, PC

30765 Pacific Coast Highway, Ste. 411 | Malibu CA 90265

t: 310.457.6100 x 201 | c. 914.263.1001 | f: 310.457.9555

msalvatore@holmesweinberg.com  | www.holmesweinberg.com | Bio

 

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From: Hiser, Charles [mailto:Charles.Hiser@USPTO.GOV]
Sent: Friday, April 29, 2016 8:48 AM
To: Michael J Salvatore <MSalvatore@holmesweinberg.com>
Subject: RE: US Trademark Application 86306516 (DANGER MOUSE)

 

Mike,

 

I will be happy to make the changes for you all. However in regards to kitchen utensils, forks, knives, and spoons are not class 21 goods, they belong in Class 8.

 

4	008	Disposable tableware, namely, knives, forks and spoons	A	29 May 08	G	N
5	008	Flatware, namely, forks, knives, and spoons	A	01 Jun 01	G	N
6	008	Knives, forks and spoons	A	08 Nov 07	G	N	T
7	008	Plastic cutlery, namely, knives, forks, and spoons	A	27 Jan 11	G	N
8	008	Silverware, namely, forks, knives and spoons that are made of silver or silver-plated	A	07 May 09	G	N
9	008	Stainless steel table knives, forks and spoons	A	02 Apr 91	G	N
10	008	Sterling silver table knives, forks and spoons	A	02 Apr 91	G	N
11	008	Tableware, namely, knives, forks and spoons	A	02 Apr 91	G	N
12	008	Tableware, namely, knives, forks and spoons made of precious metal	A	02 Apr 91	G	N

 

We can add class 8 or amend the kitchen utensils ID in a different way.

Thanks,

 

Charlie

 

From: Michael J Salvatore [mailto:MSalvatore@holmesweinberg.com]
Sent: Friday, April 29, 2016 11:05 AM
To: Hiser, Charles <Charles.Hiser@USPTO.GOV>
Cc: hwtrademarks@gmail.com
Subject: Re: US Trademark Application 86306516 (DANGER MOUSE)

 

Hi Charles,

 

Thank you for writing.  I am OK with all of your below suggest specifications as written, except that our client would like the Class 21 specification to be:

 

Household utensils, namely, spatulas, ladles, whisks, cake and pie servers, slotted spoons, pasta serving forks, cooking spoons, mixing spoons, serving spoons, kitchen tongs, dusting brushes, scrapers for household purposes and household containers; kitchen utensils, namely, forks, knives and spoons; kitchen containers not of precious metal or coated therewith; beverage glassware; porcelain statues and earthenware basins; mugs; cruet sets; pepper mills; salt mills; toast racks; lunch boxes; flasks; fitted picnic baskets; insulated bottles sold empty; insulated flasks; portable coolers and portable insulated coolers; thermally insulated containers all for carrying or storing food and/or drink; combs; cleaning sponges, scouring sponges, bath sponges; crumb brushes; toothbrushes; cosmetic utensils, namely, spatulas and brushes; non-electric trouser presses; tie presses; shoe-trees; shaving brush stands; ironing boards; ironing board covers; cages for household pets; brush-making materials; un-worked or semi-worked glass.

 

We approve the entry of an examiner’s amendment to effectuate these changes.  Please let us know if you have any questions.

 

Best,

 

Mike

 

Michael J. Salvatore

Holmes Weinberg, PC

30765 Pacific Coast Highway, Ste. 411 | Malibu CA 90265

t: 310.457.6100 x 201 | c. 914.263.1001 | f: 310.457.9555

msalvatore@holmesweinberg.com  | www.holmesweinberg.com | Bio

 

CONFIDENTIALITY NOTICE: This e-mail message is for the personal and confidential use of the recipient(s) named above. This message may also contain privileged client information or work product. If the reader of this message is not the intended recipient or an agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this message in error, please notify us immediately by e-mail, and delete the original message and any attachments.

 

On Apr 29, 2016, at 7:02 AM, Hiser, Charles <Charles.Hiser@USPTO.GOV> wrote:

 

Dear Mr. Salvatore,

 

I hope this email finds you well. I am the new examining attorney on this application as Mrs. Izzi is on extended leave. We received your disclaimer on March 16^th and while I was doing final publication review I noticed a few identifications that are still considered indefinite that will need to be fixed. I am sorry about that but the last thing I want is for this to get delayed longer if those issues were found later. My suggestions are below.

 

Class 16 is acceptable

 

Class 21 has two issues we need to make sure to say the bottles are being sold empty and we need to name the kitchen utensils – i.e. spatulas, whisks, cheese graters, etc.

 

My suggestion: Household utensils, namely, spatulas, ladles, whisks, cake and pie servers, slotted spoons, pasta serving forks, cooking spoons, mixing spoons, serving spoons, kitchen tongs, dusting brushes, scrapers for household purposes and household containers; kitchen utensils, namely, { spatulas, whisks, cheese graters }; kitchen containers not of precious metal or coated therewith; beverage glassware; porcelain statues and earthenware basins; mugs; cruet sets; pepper mills; salt mills; toast racks; lunch boxes; flasks; fitted picnic baskets; insulated bottles sold empty; insulated flasks; portable coolers and portable insulated coolers; thermally insulated containers all for carrying or storing food and/or drink; combs; cleaning sponges, scouring sponges, bath sponges; crumb brushes; toothbrushes; cosmetic utensils, namely, spatulas and brushes; non-electric trouser presses; tie presses; shoe-trees; shaving brush stands; ironing boards; ironing board covers; cages for household pets; brush-making materials; un-worked or semi-worked glass

 

Class 24 has three issues: flannels needs to be flannel so people don’t assume it is the shirt; we need to expand what napery is – i.e. textile napkins, textile placemats, textile coasters -; lastly is pyjama cases, bags and cases for storing items go in class 22 which you all do not currently have in this application, we can add the class or this ID can be deleted.

 

My suggestion: Textiles being quilts; textile articles, namely, curtains, handkerchiefs, towels, table linen; bed covers and plastic table covers; household linen; linen cloth; bed linen; bath linen; table linen; table cloths not of paper; curtains of textile or plastic; pillow shams; pillow cases; bed sheets; eiderdowns; duvets; covers for eiderdowns and duvets; napery, namely, {textile napkins, textile placemats, textile coasters }; table napkins of textile; textile serviettes; table mats not of paper; face towels; flannel flannels; tissues of textile for removing make-up; traced cloth for embroidery; tapestry of textile; travelling rugs; unfitted plastic furniture coverings; hot water bottle covers made of fabric; pyjama cases being household lines for storing pajamas

 

Class 25: we just need to delete two duplicate entries: night shirts and skirts

 

My suggestion: Articles of clothing, namely, maillots, coats, overcoats, trench coats, raincoats, anoraks, parkas, blazers, jackets, cardigans, sport coats, wind resistant jackets, vests, dresses, caftans, evening gowns, jumpers, skirts, pants, slacks, trousers, jeans, dungarees, jumpsuits, coveralls, gym suits, jogging suits, sweat pants, shorts, culottes, sweaters, hooded sweatshirts, pullovers, jerseys, shirts, blouses, tunics, sweatshirts, T-shirts, halter tops, tank tops, bodysuits, camisoles, chemises, undershirts, slips, corsets, brassieres, briefs, boxer shorts, underpants, panties, thermal underwear, lingerie, nightgowns, night shirts, negligees, robes, pajamas, aprons, hosiery, panty hose, tights, knee high stockings, leggings, pocket squares, scarves, shawls, neckerchiefs, gloves, mittens, belts, sashes, swimwear, bathing suits, bathing trunks, beachwear, thermal socks, bathrobes, beach cover-ups, berets, blanket sleepers, Halloween costumes, costumes for use in children's dress up play; costumes for use in the amusement industry, neckties, night shirts, skirts, socks, stockings, suspenders and earmuffs; footwear; boots; shoes; slippers; sandals; socks; hosiery; trainers being sneakers; headgear, namely, visors, hoods, berets and headbands; hats; caps; scarves; gloves; mittens

 

Class 28: just a small typo with “electronic toy vehicles”

 

My suggestion: Games, namely, memory games, target games, board games and card games; playthings, namely, jigsaw puzzles, kites, toy action figures, disc-type toss toys, toy bows and arrows, sport balls and playground balls, doll playsets, accessories for dolls; dolls' houses; dolls' furniture; dolls' furniture accessories; toy action figures; plush toys, toy vehicles, toy bucket and shovel sets, roller skates, toy model hobbycraft kits, toy rockets, toy guns, toy holsters, musical toys, badminton sets, bubble making wands and solution sets, toy figurines, toy banks, puppets, toy balloons, yo-yos, skateboards, toy scooters, toy and novelty face masks; paper party hats; blow-outs, namely, noise making party favors; party favors in the nature of small toys; party favors in the nature of crackers; hand-held computer game equipment which is self-contained and not adapted for use with TV receivers; dolls and dolls' clothing; teddy bears; playing cards; slot machines; electronic toys and electronic games, namely, electronic toy vehicles vehicles', electronic action toys, electronic learning toys, and electronic games, namely, hand held unit for playing electronic games, tabletop units for playing electronic games other than in conjunction with a television or computer, arcade type electronic video games; electronic games other than those adapted for use with television receivers only; amusement apparatus, namely, video game machines adapted for use with television receivers; electrical and video amusement apparatus and instruments, namely, video game machines adapted for use with television receivers; paper party streamers; paper party favors

 

Class 30 is acceptable.

 

I would be more than happy to do an examiner’s amendment for this file and get it moving forward. Just let me know how you would like to proceed.

Thanks,

 

Charles H. Hiser IV

Trademarks Examining Attorney

Law Office 112

United States Patent & Trademark Office

(571) 272-7526 

Charles.Hiser@uspto.gov

 

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