NOTE TO THE FILE
SERIAL NUMBER: 87097185
DATE: 10/21/2016
NAME: kcrennan
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
X 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
X Changed TRADEUPS to: amended ID and mark descriptionX OTHER: deleted black line appearing on the right border in the drawing
From: Vic Indiano [mailto:vic@iplawindiana.com]
Sent: Friday, October 21, 2016 3:12 PM
To: Crennan, Kevin <Kevin.Crennan@USPTO.GOV>
Cc: bren607@hotmail.com; Whitaker, Jodie and Bren <JWhit427@hotmail.com>
Subject: RE: U.S. Trademark Application Serial No. 87097185 I
Thank you. Vic
Please Note The New Address
E. Victor Indiano
Indiano & McConnell, LLP
9795 Crosspoint Boulevard, Suite 185
Indianapolis, IN 46256
Phone: 317-436-7402
Vic Direct Dial: 317-927-8465
Fax: 317-927-8279
E-mail: Vic@IM-IPLAW.com
Confidentiality Notice: This E-Mail may contain confidential and/or privileged information that is intended solely for the recipient to whom it is addressed. If you received this E-mail by mistake, or if you are not the intended recipient, please be advised that you are prohibited from disclosing this information to anyone, and are prohibited from relying on any of the information contained herein. Also, it would be appreciated if you could report this error to the sender, by reply E-mail, so that it can be forwarded to the proper recipient
From: Crennan, Kevin [mailto:Kevin.Crennan@USPTO.GOV]
Sent: Friday, October 21, 2016 3:05 PM
To: Vic Indiano
Cc: bren607@hotmail.com; Whitaker, Jodie and Bren
Subject: RE: U.S. Trademark Application Serial No. 87097185 I
I’ll do an Examiner’s Amendment.
From: Vic Indiano [mailto:vic@iplawindiana.com]
Sent: Friday, October 21, 2016 2:45 PM
To: Crennan, Kevin <Kevin.Crennan@USPTO.GOV>
Cc: bren607@hotmail.com; Whitaker, Jodie and Bren <JWhit427@hotmail.com>
Subject: RE: U.S. Trademark Application Serial No. 87097185 I
Dear Examiner Crennan:
That sounds like a great idea. Do you want to do this with an examiner’s amendment? Or should I do it via teas?
An examiner’s amendment is fine with me.
Thanks,
Vic
From: Crennan, Kevin [mailto:Kevin.Crennan@USPTO.GOV]
Sent: Friday, October 21, 2016 12:52 PM
To: Vic Indiano
Cc: bren607@hotmail.com; Whitaker, Jodie and Bren
Subject: RE: U.S. Trademark Application Serial No. 87097185 I
All of these are fine, but going back to the mark description. Since you confirmed that the shaded circle, in fact, represents the letter “O”, I suggest amending it to the following (the current description is unclear what portion of the mark creates an “O”): “The mark consists of the letter “I” superimposed over a teardrop and a shaded circle. The shaded circle forms the letter “O”.”
From: Vic Indiano [mailto:vic@iplawindiana.com]
Sent: Thursday, October 20, 2016 3:35 PM
To: Crennan, Kevin <Kevin.Crennan@USPTO.GOV>
Cc: bren607@hotmail.com; Whitaker, Jodie and Bren <JWhit427@hotmail.com>
Subject: FW: U.S. Trademark Application Serial No. 87097185 I
Dear Examiner Crennan –
Below I have tried to address the issues you raised in your e-mail today and suggest a proposal for getting the application in condition for publication.
Please consider my proposal and respond at your convenience. If you wish to chat about the proposal, please call me so that we can chat. My comments are shown in red, to help you find them more quickly.
Thanks in advance,
/Vic Indiano/
E. Victor Indiano
Indiano & McConnell, LLP
9795 Crosspoint Boulevard, Suite 185
Indianapolis, IN 46256
Phone: 317-913-1331
Vic Direct Dial: 317-927-8465
Fax: 317-927-8279
E-mail: Vic@IM-IPLAW.com
Confidentiality Notice: This E-Mail may contain confidential and/or privileged information that is intended solely for the recipient to whom it is addressed. If you received this E-mail by mistake, or if you are not the intended recipient, please be advised that you are prohibited from disclosing this information to anyone, and are prohibited from relying on any of the information contained herein. Also, it would be appreciated if you could report this error to the sender, by reply E-mail, so that it can be forwarded to the proper recipient
From: Crennan, Kevin [mailto:Kevin.Crennan@USPTO.GOV]
Sent: Thursday, October 20, 2016 12:44 PM
To: Vic@IM-IPLaw.com
Subject: U.S. Trademark Application Serial No. 87097185 I
Hello Mr. Indiano,
I’ve reviewed the above trademark application for registration. Before the application may be approved for publication for opposition, a few issues must be resolved.
First, duplicate goods appear in the identification of goods. I suggest deleting one of the duplicate entries for the following in the intent-to-use portion of the identification: “Hats”, “Hoodies”, and “Socks”.
I propose that we amend the goods and services description as follows:
Hats; Shirts(Effectively deletes all of the IN USE goods to convert the application to an entirely Intent to Use application)
(Based on Intent to Use) Hoodies; Pants; Scarves; Socks; Beachwear; Bottoms; Footwear; Gloves; Hats; Head sweatbands;
Hoodies;Jackets and socks; Jogging pants; Jogging suits; Leg-warmers; Leotards; Skiwear; Sleepwear; Sleeved or sleeveless jackets;Socks; Sports jerseys and breeches for sports; Sweat bands; Sweat jackets; Sweat pants; Sweat shirts; Sweat suits; Swimwear; Tank tops; Tee shirts; Tops; Warm up suits; Yoga pants; Yoga shirts.
Second, the mark description requires amendment. I do not perceive the letter O in the mark; rather the mark appears to be the letter I superimposed over designs of a circle and droplet. Therefore, I suggest the following amendment to the description: “The mark consists of the letter “I” inside a shaded circle containing a droplet.”
The “O” in the logo is the big black circular area with the tear drop being the interior space of the O
Third, there appears a black line on the right of the drawing. I assume that’s not part of the mark, so will you allow me to delete it.
The Line on the right of the mark is not part of the mark. It is just a scanning artifact
Fourth, and last, the mark appears ornamentally on the clothing. Your client may amend the application to the Supplemental Register. If you choose that route, then I can issue an Examiner’s Amendment for all of the preceding issues and approve the mark for publication. However, if your client has a better specimen that was in use as early as the filing date and does not show the mark being used ornamentally, then I can issue an Examiner’s Amendment for the first three items above, and a Priority action on the outstanding ornamental refusal.
Although I do not necessarily with your assertion of “ornamental use”, I still understand your concern.
However, rather than bump the application down to the supplemental register, I suggest that we cancel all of the IN USE goods, so that the application becomes a fully Intent to Use Application, which concedes, effectively that the use shown in the specimens may not qualify as a “trademark use” deserving of registration on the Principal Register.
After the notice of allowance is received (if such occurs) we will then submit new specimens with a use date that reflects their use, which hopefully more clearly qualify as a trademark use
Please let me know by Tuesday, October 25th, with how you’d like to proceed.
Thanks,
/KGC/
Kevin G. Crennan
Trademark Examining Attorney
Law Office 113
United States Patent and Trademark Office
(571) 272-7949
I look forward to your response. Thanks in advance for your consideration in this matter.
Vic Indiano