SERIAL NUMBER: 87231942
DATE: 03/22/2019
NAME: ssettles
NOTE:
Searched:
Google
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:
Checked:
Geographic significance
Surname
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 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:
OTHER:
-----Original Message-----
From: Jonathan Morton (Morton Associates) [mailto:jm@moas.com]
Sent: Friday, March 22, 2019 10:19 AM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Cc: Rexis Maamo <rm@moas.com>
Subject: Re: FW: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 87231942 (Spicy)
Dear Ms. Lewis,
Thank you very much.
Regards,
---
MORTON + ASSOCIATES LLP
246 West Broadway, New York, NY 10013
Jonathan G. Morton, Partner – jm@moas.com
212-468-5515 Direct line
212-666-5000 Office
212-656-1828 Fax
The information contained in this transmission is legally privileged and confidential, intended only for the use of the individual or entity named above. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited.
If you receive this communication in error, please notify us immediately by telephone at 212-666-5000 and delete the message. Thank you.
On Fri, Mar 22, 2019 at 2:35 PM Lewis, Shaila E. <Shaila.Lewis@uspto.gov> wrote:
>
> Dear Mr. Morton,
>
> Substituting a filing basis will require that you file a formal response and support the amended filing basis with an affidavit or Declaration under 2.20. If you were deleting the goods that are not covered by the foreign registration, then I would be able to make the changes for you via examiner's amendment. My apologies for not making that clear up front.
>
> I will issue a non-final refusal outlining this issue, and you'll have six months in which to respond.
>
> Kind regards,
>
>
> Shaila E. Lewis
> Trademark Examining Attorney
> Law Office 114
> 571-270-1527 (tel.)
> 571-270-2527 (fax)
>
>
>
> -----Original Message-----
> From: Jonathan Morton (Morton Associates) [mailto:jm@moas.com]
> Sent: Friday, March 22, 2019 5:58 AM
> To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
> Cc: Rexis Maamo <rm@moas.com>
> Subject: Fwd: FW: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION
> REGARDING U.S. APPLICATION NO. 87231942 (Spicy)
>
> Dear Ms. Lewis,
> Please add a section 1b basis for all goods not covered in the foreign registration.
>
> Thank you.
>
> Regards,
> ---
>
> MORTON + ASSOCIATES LLP
> 246 West Broadway, New York, NY 10013
>
> Jonathan G. Morton, Partner – jm@moas.com
>
> 212-468-5515 Direct line
> 212-666-5000 Office
> 212-656-1828 Fax
>
> The information contained in this transmission is legally privileged and confidential, intended only for the use of the individual or entity named above. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited.
> If you receive this communication in error, please notify us immediately by telephone at 212-666-5000 and delete the message. Thank you.
>
>
> From: jgm@moas.com <jgm@moas.com> On Behalf Of Lewis, Shaila E.
> Sent: Saturday, 16 March 2019 12:14 AM
> To: jgm@moas.com
> Subject: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S.
> APPLICATION NO. 87231942 (Spicy)
>
>
>
> Dear Mr. Morton,
>
>
>
> I am the examining attorney assigned to review the above-referenced trademark application on behalf of the U.S. Patent and Trademark Office.
>
>
>
> I have reviewed the foreign registration and have determined that the following services in the identification are beyond the scope of the foreign registration: “Entertainment services, namely, multimedia production services, organizing, arranging, and hosting social entertainment events, presenting live musical performances; Production of radio and television shows and programmes; film production services; Presentation of movies; Film distribution; Provision of non-downloadable films and television programs via a video-on-demand service; Arranging and conducting educational congresses in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; Organization of exhibitions for cultural and educational purposes; Publication of electronic books and journals online”.
>
>
>
> For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration. 37 C.F.R.
> §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).
>
>
>
> Thus, these goods and/or services in the U.S. application are not acceptable and may not be amended to correspond with the goods and/or services in the foreign registration. You may respond to this issue by satisfying one of the following:
>
>
>
> (1) Amending the identification of goods and/or services in the
> U.S. application to correspond to the goods and/or services in the
> foreign registration, if possible, to ensure that all goods and/or
> services beyond the scope of the foreign registration are deleted from
> the U.S. application; or
>
>
>
> (2) Substituting a basis under Section 1(a) or 1(b) for those
> goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
>
>
>
> See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
>
>
>
> If you would like to have the changes entered by me via examiner's amendment, please let me know on or before Tuesday, March 19, 2019. If you have any questions, feel free to call or email.
>
>
>
> Kind regards,
>
>
>
> Shaila E. Lewis
>
> Trademark Examining Attorney
>
> Law Office 114
>
> 571-270-1527 (tel.)
>
> 571-270-2527 (fax)