NOTE TO THE FILE
SERIAL NUMBER: 86729901
DATE: 12/04/2015
NAME: gswift
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 via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X 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: Genevieve Burch [mailto:genevieve.burch@wineryexchange.com]
Sent: Friday, December 04, 2015 3:33 PM
To: Swift, Gilbert M.; Trademarks
Subject: RE: Response Requested: Trademark Application Serial No. 86729901-WX
Agreed. Thanks
From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Friday, December 04, 2015 12:32 PM
To: Genevieve Burch <genevieve.burch@wineryexchange.com>; Trademarks <trademarks@wineryexchange.com>
Subject: RE: Response Requested: Trademark Application Serial No. 86729901-WX
Hello Genevieve,
I see that I’ve overlooked a different problem in the ID. It appears that “alcohol distilling services” can refer to chemical manufacturing; however, I don’t think that’s what your client is doing. May we please amend to “alcohol distillery services”?
Thus, for Class 040 ONLY: “Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distillery services”
Thank you,
Gilbert
Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028
All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to an Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.
From: Genevieve Burch [mailto:genevieve.burch@wineryexchange.com]
Sent: Friday, December 04, 2015 11:26 AM
To: Swift, Gilbert M.; Trademarks
Subject: RE: Response Requested: Trademark Application Serial No. 86729901-WX
Hi Gilbert,
I authorize you to make an Examiner’s Amendment of the goods as shown below. Thank you.
Class 032: Beer; non-alcoholic beverages, namely fruit juice beverages; drinking water; Mineral and aerated waters and other non-alcoholic beverages, namely, soft drinks; fruit beverages and fruit juices; syrups and concentrates for making soft drinks; non-alcoholic malt beverages; vegetable juices
Class 033: Alcoholic beverages except beers
Class 040: Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distilling services
Genevieve Burch
Associate General Counsel
Winery Exchange
500 Redwood Blvd., Ste 200
Novato, CA 94947
email: genevieve.burch@wineryexchange.com
phone: (415) 382-6733
From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Thursday, December 03, 2015 5:53 PM
To: Trademarks <trademarks@wineryexchange.com>
Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: Response Requested: Trademark Application Serial No. 86729901—WX
Response Requested: Trademark Application Serial No. 86729901—WX
Dear Genevieve Burch, Esq.:
I am the Trademark examining attorney assigned to the above-captioned application. I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.
Requirement: Identification of Goods and Services
The goods and services are:
Class 032: “Beer; non-alcoholic beverages; water; Mineral and aerated waters and other non-alcoholic beverages, namely, soft drinks; fruit beverages and fruit juices; syrups and concentrates for making soft drinks; non-alcoholic malt beverages; vegetable juices”
Class 040: “Custom production of wine; winery services; beer making and brewing services for others; alcohol distilling services”
The above bolded wording in the identification of goods and services needs clarification because it does not identify the goods and services with enough specificity and it is too broad because it may identify goods and services in multiple International Classes. See TMEP §§1402.01, 1402.03.
If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.
Class 001: Distilled water
Class 031: Drinking water for dogs
Class 032: Beer; non-alcoholic beverages, namely, [please specify in International Class 032 by common commercial name, e.g. fruit juice beverages, beverages with tea flavor]; drinking water; Mineral and aerated waters and other non-alcoholic beverages, namely, soft drinks; fruit beverages and fruit juices; syrups and concentrates for making soft drinks; non-alcoholic malt beverages; vegetable juices
Class 033: Alcoholic beverages except beers
Class 040: Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distilling services
See TMEP §1402.01.
Advisories
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
The examining attorney has attached excerpts from the ID Manual to aid the applicant. Please see attached.
Multiclass Advisories
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and services that are classified in at least five classes; however, applicant submitted fees sufficient for only three classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
With your authorization, I can make this change to the application on your behalf via an Examiner’s Amendment. If you wish to add classes to the application, I will issue an Examiner’s Amendment/ Priority Action to (1) dispose of the Identification of Goods and Services requirement and (2) to issue a requirement for payment of additional fees for any additional classes. To provide authorization, you simply need to give it in a reply to this email.
Alternatively, I can issue an Office action to which you may respond formally, e.g. via the Trademark Electronic Application System (TEAS) available at http://www.gov.uspto.report/trademarks/teas.
Please let me know how you wish to proceed.
Thanks in advance for your response.
Gilbert
Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028
This email and any files transmitted with it are proprietary and intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. Please note that any views or opinions presented in this email are solely those of the author and do not necessarily represent those of the company.
This email and any files transmitted with it are proprietary and intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. Please note that any views or opinions presented in this email are solely those of the author and do not necessarily represent those of the company.