NOTE TO THE FILE
SERIAL NUMBER: 87129256
DATE: 11/21/2017
NAME: nkenealy
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 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:
From: Kenealy, Natalie
Sent: Tuesday, November 21, 2017 9:30 PM
To: 'DunningJ@gtlaw.com' <DunningJ@gtlaw.com>
Cc: matthewsk@gtlaw.com; CHIIPMAIL@gtlaw.com
Subject: RE: U.S. Trademark Appl. No. 87129256 - OREGON & Design
Mr. Dunning,
Thank you for your email. I will enter the changes you proposed to the identification of goods in Class 7 so that it corresponds to Serial No. 87128894.
Kind regards,
Natalie L. Kenealy
Trademark Examining Attorney
Law Office 104
571-272-7817
From: DunningJ@gtlaw.com [mailto:DunningJ@gtlaw.com]
Sent: Tuesday, November 14, 2017 3:55 PM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Cc: matthewsk@gtlaw.com; CHIIPMAIL@gtlaw.com
Subject: U.S. Trademark Appl. No. 87129256 - OREGON & Design
Dear Ms. Kenealy,
This is in response to the final office action which you issued in this case on May 25, 2017.
In the last office action, you advised that Applicant’s Section 2(f) claim of acquired distinctiveness based on ownership of prior registrations was accepted and overcame the prior Section 2(e)(2) refusal. You further noted that the requirement for a definite and accurate identification of goods was maintained and made final, and identified several descriptions in Applicant’s Class 7 identification of goods that you believed to be unacceptable.
In response, Applicant notes that it filed a corresponding application for the word mark OREGON (Appl. No. 87128894) with the same original identification of goods in Class 7 on the same date as this application, which was assigned to another Examining Attorney for examination. That application was published on October 24, 2017, with an identification of goods in Class 7 which is substantially similar to the identification of goods in this case, with only a few minor differences in wording.
For the sake of consistency between its co-pending applications for the OREGON word mark and the OREGON logo mark of this application, Applicant proposes to amend the ID of goods in this application to be identical to the ID of goods which has been found acceptable in Appl. No. 87128894, which reads as follows:
Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, edgers, log splitters, powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor; structural parts and fittings for outdoor power equipment and parts and fittings for internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chainsaws, air filters, oil filters, fuel lines, fuel filters, fuel caps and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons for engines, tie straps for saw chain, carburetors, throttle controls for outdoor power equipment in the nature of replacement throttle levers and cables, starters for motors and engines, engine mufflers and spark plugs; machine parts, namely, bearings, bushings, control cables for outdoor power equipment, idling pulleys being parts of machines; belts for machines; clutches for machines; drive chains for machines; drive parts for machines, namely, idler sprockets, gears, drive pins, drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads and blades; lawn mower parts, namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and power-operated grinder accessories, namely, grinding wheels, power-operated grinding stones, grinding wheel dressing tools, grinder machine stands, mulching blade adaptors for power-operated grinders, grit collectors for attachment to grinding machines, and structural replacement parts therefor; power-operated grinding wheels; electric rivet spinners; snow thrower parts, namely, augurs, scraper bars, shave plates, namely, scraper blades for snow throwers, skid shoes for snow throwers, paddles for snow throwers; fitted tarps for power machinery; stands for machines; mower sulkies
Applicant believes that adopting the approved ID of goods from Appl. No. 87128894 should resolve the issues raised by the Examining Attorney in this case. Specifically, with regard to the wording “wheel dressing tools” which you believed referred to a specific variety of hand tool properly classified in Class 8, Applicant notes that this wording would be amended to read “grinding wheel dressing tools” which refers to a particular type of accessory for power-operated grinding wheels (shown here) properly classified in Class 7.
Assuming that you find the proposed amendment to Applicant’s Class 7 ID of goods set out above to be acceptable, we would appreciate your entry of the same by way of an examiner’s amendment. Should you have any other concerns regarding the proposed amendment, please feel free to call or e-mail me to see if we can resolve them, to enable approval of this application for publication.
We appreciate your attention to this request. Again, please feel free to contact me if there are any remaining issues that you believe are not resolved by the proposed amendment set out above.
Sincerely,
Jeff Dunning
Jeffrey P. Dunning
Shareholder
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.6612 | Fax 312.899.0351DunningJ@gtlaw.com | www.gtlaw.com
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