Notation to File

WX

Winery Exchange, Inc.

RE: SPECIMEN for WX services -- Ser No 86729901 Genevieve: Please enter your proposed ID amendments in your formal response. While you have not given specific language you wish to add, please note that the identification of services as amended are limited to, “Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distillery services” in Class 040. This is a definite ID and it is accepted into the record. The ID of record is not capable of encompassing services in other classes. If you wish to protect services in other classes, please consider another application. With respect to the current application, please present all arguments, evidence and any substitute specimens in your response by the specified deadline. Respectfully, Gilbert From: Genevieve Burch [mailto:gburch@wxbrands.com] Sent: Wednesday, December 20, 2017 6:27 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: RE: SPECIMEN for WX services -- Ser No 86729901 Hi Gilbert, I understand I can’t add services, but these are well within the services we originally filed for -- Custom production of wine for others and winery services. This is not an addition, but an amendment to cover the proper classes, as you pointed out form our specimens. Thanks, Genevieve From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Wednesday, December 20, 2017 2:52 PM To: Genevieve Burch <gburch@wxbrands.com> Subject: RE: SPECIMEN for WX services -- Ser No 86729901 Hello Genevieve, I’m afraid you cannot add services to the application. “Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.” 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. I know that’s not what you wanted to read. In any event, I sincerely wish your client the very best with the business. 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. You may use your application serial number to view the current status and all of the documents in your Tradmark Application file using your serial number here: http://tsdr.uspto.gov/ From: Genevieve Burch [mailto:gburch@wxbrands.com] Sent: Wednesday, December 20, 2017 5:45 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: RE: SPECIMEN for WX services -- Ser No 86729901 Hi Gilbert, Thanks for taking the time to speak to me today. It was very helpful. I am going to continue to work to find a proper specimen for the services ID as filed. However, can we also add the services you describe below, in classes 042 and 039? Could you do that via an Examiner’s Amendment? Thanks, Genevieve GENEVIEVE BURCH VP LEGAL, ASSOCIATE GENERAL COUNSEL 500 Redwood Boulevard, Suite 200 Novato, CA 94947 m 415.994.4342 o 415.382.6733 f 415.382.6905 e gburch@WXbrands.com From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Tuesday, December 19, 2017 4:53 AM To: Genevieve Burch <gburch@wxbrands.com> Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: FW: SPECIMEN for WX services -- Ser No 86729901 Hello Genevieve, Thank you for your email. The substitute specimens would be great if your client’s services were (1) custom product development, a Class 042 service or (2) bottling services in Class 039; however, the services in the application are listed as “Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distillery services” in Class 040. In other words, specimens showing branding, packaging and bottling wine, beer and alcohol without showing the actual production, making, brewing and distilling of these goods will not work. Please see the excerpts from the ID Manual I pasted just below that illustrate the differences. Specifically with respect to bottling services, the ID Manual states that on April 12, 1999, “This service was transferred to Class 40.” I know this is not what you would have liked to read, but I hope this helps. It’s 4:45 AM in California, so I am writing instead of responding by phone. Besides, I can provide illustrations in an email. Please feel free to give me a ring today if you wish; I should be in all day. Thank you for your patience while I have been out of the office. Very best regards, Gilbert From: Genevieve Burch [mailto:gburch@wxbrands.com] Sent: Monday, December 11, 2017 6:37 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: SPECIMEN for WX services -- Ser No 86729901 Hi Gilbert, I received an office action on this application. I think the attached specimens should alleviate your concerns, but I wanted to check with you before submitting them. Can you confirm th

NOTE TO THE FILE

SERIAL NUMBER: 86729901

DATE:    12/20/2017

NAME: gswift

NOTE:

From: Swift, Gilbert M.
Sent: Wednesday, December 20, 2017 7:28 PM
To: 'Genevieve Burch' <gburch@wxbrands.com>
Subject: RE: SPECIMEN for WX services -- Ser No 86729901

Genevieve:

Please enter your proposed ID amendments in your formal response.

While you have not given specific language you wish to add, please note that the identification of services as amended are limited to, “Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distillery services” in Class 040. This is a definite ID and it is accepted into the record. The ID of record is not capable of encompassing services in other classes. If you wish to protect services in other classes, please consider another application.

With respect to the current application, please present all arguments, evidence and any substitute specimens in your response by the specified deadline.

Respectfully,

Gilbert

From: Genevieve Burch [mailto:gburch@wxbrands.com]
Sent: Wednesday, December 20, 2017 6:27 PM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: RE: SPECIMEN for WX services -- Ser No 86729901

Hi Gilbert,

I understand I can’t add services, but these are well within the services we originally filed for -- Custom production of wine for others and winery services.   This is not an addition, but an amendment to cover the proper classes, as you pointed out form our specimens.

Thanks,

Genevieve

From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Wednesday, December 20, 2017 2:52 PM
To: Genevieve Burch <gburch@wxbrands.com>
Subject: RE: SPECIMEN for WX services -- Ser No 86729901

Hello Genevieve,

I’m afraid you cannot add services to the application. “Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.” 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

I know that’s not what you wanted to read. In any event, I sincerely wish your client the very best with the business.

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.

You may use your application serial number to view the current status and all of the documents in your Tradmark Application file using your serial number here: http://tsdr.gov.uspto.report/

From: Genevieve Burch [mailto:gburch@wxbrands.com]
Sent: Wednesday, December 20, 2017 5:45 PM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: RE: SPECIMEN for WX services -- Ser No 86729901

Hi Gilbert,

Thanks for taking the time to speak to me today. It was very helpful. I am going to continue to work to find a proper specimen for the services ID as filed. However, can we also add the services you describe below, in classes 042 and 039?   Could you do that via an Examiner’s Amendment?

Thanks,

Genevieve

GENEVIEVE BURCH

VP LEGAL, ASSOCIATE GENERAL COUNSEL

500 Redwood Boulevard, Suite 200

Novato, CA 94947

m 415.994.4342

o 415.382.6733

f   415.382.6905

e gburch@WXbrands.com

From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Tuesday, December 19, 2017 4:53 AM
To: Genevieve Burch <gburch@wxbrands.com>
Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: FW: SPECIMEN for WX services -- Ser No 86729901

Hello Genevieve,

Thank you for your email. The substitute specimens would be great if your client’s services were (1) custom product development, a Class 042 service or (2) bottling services in Class 039; however, the services in the application are listed as “Custom production of wine for others; winery services; beer making and brewing services for others; alcohol distillery services” in Class 040. In other words, specimens showing branding, packaging and bottling wine, beer and alcohol without showing the actual production, making, brewing and distilling of these goods will not work.

Please see the excerpts from the ID Manual I pasted just below that illustrate the differences. Specifically with respect to bottling services, the ID Manual states that on April 12, 1999, “This service was transferred to Class 40.”

I know this is not what you would have liked to read, but I hope this helps. It’s 4:45 AM in California, so I am writing instead of responding by phone. Besides, I can provide illustrations in an email.   Please feel free to give me a ring today if you wish; I should be in all day. Thank you for your patience while I have been out of the office.

Very best regards,

Gilbert

From: Genevieve Burch [mailto:gburch@wxbrands.com]
Sent: Monday, December 11, 2017 6:37 PM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: SPECIMEN for WX services -- Ser No 86729901

Hi Gilbert,

I received an office action on this application. I think the attached specimens should alleviate your concerns, but I wanted to check with you before submitting them. Can you confirm these are sufficient? If not, can you please give me a call to discuss?

Thank you,

Genevieve

GENEVIEVE BURCH

VP LEGAL, ASSOCIATE GENERAL COUNSEL

500 Redwood Boulevard, Suite 200

Novato, CA 94947

m 415.994.4342

o 415.382.6733

f   415.382.6905

e gburch@WXbrands.com

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.

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.