NOTE TO THE FILE
SERIAL NUMBER: 87290078
DATE: 01/31/2017
NAME: mmaresca
NOTE:
Searched:
X Google
X OneLook
X Other: www.publix.comDiscussed file with
Attorney via:
X emailX Issued Examiner’s Amendment and entered changes in TRADEUPS
From: James B. Lake [mailto:jlake@tlolawfirm.com]
Sent: Tuesday, January 31, 2017 9:59 AM
To: Maresca, Meredith <Meredith.Maresca@USPTO.GOV>
Cc: Karen Lee <klee@tlolawfirm.com>; Carol Jean LoCicero <clocicero@tlolawfirm.com>
Subject: RE: USPTO Application for Publix (U.S. Application Serial No. 87290078)
Ms. Maresca:
Thank you for the message below. Regarding the services description, the deletion of “counseling” and the addition of “conducting” are acceptable.
Publix elects not to add class 44 to this application.
Please let me know if you have any questions or would like any further information.
Thank you.
Jim Lake
Thomas & LoCicero PL
Focused on Business Litigation, Media and IP Law
Member of The National Association of Minority and Women Owned Law Firms, Inc. (NAMWOLF®)
jlake@tlolawfirm.com | tlolawfirm.com
ph: 813.984.3060 | direct: 813.984.3063
fax: 813.984.3070 | toll-free: 866.395.7100
601 S. Boulevard, Tampa, FL 33606
Tampa | South Florida
CONFIDENTIALITY NOTICE: The information contained in this email message is intended for the personal and confidential use of the recipient(s) designated above. This message may contain information that is privileged, confidential and exempt from disclosure under applicable law and any unauthorized or inadvertent use, receipt, disclosure, dissemination or distribution of such information shall not waive any such privilege. If you are not an intended recipient of this message, and/or you have received this message in error, then please notify the sender at (813) 984-3060. Any unauthorized and/or unintended review, use, dissemination, distribution or reproduction of this message, or any of the information contained in it, is strictly prohibited.
From: Maresca, Meredith [mailto:Meredith.Maresca@USPTO.GOV]
Sent: Thursday, January 26, 2017 4:35 PM
To: James B. Lake; Trademarks
Subject: USPTO Application for Publix (U.S. Application Serial No. 87290078)
Dear Mr. Lake,
I am a trademark examining attorney for the U.S. Patent and Trademark Office. I am contacting you because I have examined the application for PUBLIX (U.S. Application Serial No. 87290078, attorney docket no. 15-420019) and have an issue that can be resolved informally (through email) with an Examiner’s Amendment.
Specifically, the identification of services includes some indefinite wording and misclassified services. Applicant’s identification of services is as follows: “educational services, namely, workshops, classes, counseling and demonstrations in the fields of nutrition and diets for specific health conditions; providing educational presentations to businesses and organizations in the field of nutrition; grocery store tours to educate customers about nutrition, healthy foods and food labeling,” in International Class 41.
Applicant has classified “counseling . . . in the fields of nutrition and diets for specific health conditions” in International Class 41; however, the proper classification dietary and nutrition counseling and advice is International Class 44. Therefore, applicant must either add International Class 44 to the application and reclassify these services in the proper international class, or delete “counseling” from the application. However, if applicant adds Class 44 to the application, it will be required to pay an additional fee (and submit a specimen for that class).
In addition, the wording “grocery store tours to educate customers about nutrition, healthy foods and food labeling” in the identification of services is indefinite and must be clarified because applicant must indicate the services it provides with respect to the tours, such as conducting the tours.
Applicant may adopt the following amended identification, if accurate. Suggested amendments are in bold:
International Class 41: Educational services, namely, workshops, classes, and demonstrations in the fields of nutrition and diets for specific health conditions; providing educational presentations to businesses and organizations in the field of nutrition; conducting grocery store tours to educate customers about nutrition, healthy foods and food labeling
International Class 44: Counseling in the fields of nutrition and diet for specific health conditions
If the applicant wishes to delete “counseling” for the identification, I can enter this change on the applicant’s behalf by Examiner’s Amendment. However, if applicant would like to add Class 44 to the application, I will issue a Priority action, as applicant must also submit a new verified specimen for the added class. Please get back to me no later than 4:00 pm (eastern standard time) on January 31 to let me know if you authorize the proposed amendment to Class 41 (to delete “counseling” and add “conducting” before “grocery store tours”). If you need more time to respond, please let me know and I will issue a Priority action, which will give the applicant 6 months to file a response.
Thanks very much and have a wonderful day.
Best regards,
Meredith Maresca
Meredith Maresca
Trademark Examining Attorney
Law Office 109
U.S. Patent and Trademark Office
(571) 272-8985