NOTE TO THE FILE
SERIAL NUMBER: 87412461
DATE: 03/06/2018
NAME: mvallillo
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
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
Changed TRADEUPS to:Dear Ms. Kim:
The proposed amendment below, which excludes “mattresses” from the recitation, does not overcome the likelihood of confusion refusal. As the evidence attached in the previous Office action shows, retail stores often feature furniture and mattresses, and many retail stores specialize in selling just furniture and mattresses. Therefore, the goods are highly related, travel in similar channels of trade and are likely to be encountered by the same class of potential consumers. Thus, the proposed amendment would not overcome the refusal.
Best regards,
Melissa Vallillo
Examining Attorney | Law Office 105
Phone: (571) 272-5891
From: Lesley.Kim [mailto:Lesley.Kim@knobbe.com]
Sent: Tuesday, March 06, 2018 2:31 PM
To: Vallillo, Melissa <Melissa.Vallillo@USPTO.GOV>
Cc: Thomas.Yee <Thomas.Yee@knobbe.com>; Zach.Hong <Zach.Hong@knobbe.com>; Dena.Olivares <Dena.Olivares@knobbe.com>
Subject: Proposed Amendment to Identification of Services - Mark: CISCO - Serial No. 87412461 - Our Ref.: CISBR.001T
Dear Ms. Vallillo,
Further to my voicemail from today, we are reaching out to inquire whether the following amendment to the identification of services would overcome the likelihood of confusion refusal.
Class 35: Retail store services featuring sustainable artisan home furniture, excluding mattresses
Given the proposed amendment to explicitly exclude “mattresses,” the differences between Applicant’s mark and the cited mark GOOD THINGS COME FROM SYSCO, as well as the arguments submitted in our response to the first Office Action, we respectfully submit that there is no likelihood of confusion.
Please let us know if the proposed amendment is sufficient to overcome the refusal.
If you have any questions or prefer to discuss this matter on a call, please let us know. We look forward to receiving your response and greatly appreciate your time and guidance.
Best regards,
Lesley
Lesley Kim
Associate
949-721-7698 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614