NOTE TO THE FILE
SERIAL NUMBER: 87525987
DATE: 10/11/2017
NAME: jgagliardi
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
Changed TRADEUPS to:
From: Kathleen Walker [mailto:kathleen@thorn-crest.com]
Sent: Tuesday, October 10, 2017 8:36 PM
To: Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV>
Subject: Re: Your client Jeff Maher - Trademark Application Serial No. 87525987 (TRUE NORTH) - identification of goods & specimen
Thank you for your email. Can you give me more time to confirm with my client? He is traveling and I haven’t been able to reach him.
Thanks,
Kathleen
Sent from Kathleen M. Walker's iPhone
On Oct 10, 2017, at 11:45 AM, Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV> wrote:Dear Counsel,
I am examining the above-referenced trademark application. There are a couple of issues that I am writing to see if we can resolve or narrow by agreement.
(1) Identification of goods: The identification of goods must be amended. The identification and classification in the application are:
Class 034: Electronic cigarettes, electronic vape pens, vaporizers, e-liquid, atomizers, batteries, and chargers
The wording that is italicized in the identification of goods, above, is too broad because it includes goods and services in other classes. For example, vaporizers for medical purposes are properly classified in Class 010, electric vaporizers for household purposes are properly classified in Class 011, and oral vaporizers for smoking purposes are properly classified in Class 034. Atomizers sold empty for medical use are properly classified in Class 010, atomizers for household use are in Class 021, and atomizers sold as a component of electronic cigarettes are properly classified in Class 034. Batteries and battery chargers are properly classified in Class 009.
In addition, the wording that is underlined in the identification of goods, above, is indefinite and must be clarified to specify the common commercial or generic name for the goods.
Any of the following would be an acceptable identification. In the following proposed amendments are in bold.
Class 009: batteries for electronic cigarettes and battery chargers for batteries for electronic cigarettes
Class 034: Electronic cigarettes, electronic cigarettes in the nature of electronic vaporizer pens, oral vaporizers for smoking purposes; electronic
cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; atomizers sold as a component of electronic cigarettes
(2) Specimen: The specimen submitted with the application shows the applied-for mark in use in commerce on batteries and battery chargers, which are not properly classified in International Class 034. Therefore, the specimen is not acceptable to show use for the goods in International Class 034. The applicant can overcome the Class 034 specimen refusal by submitting a substitute specimen.
Would you let me know if the applicant would agree to amend the identification of goods? In the event that we are able to agree to an amended identification by noon EST on Thursday, October 12, I can enter the amendment on my end and issue an action that is limited to the multiple-class application requirements and/or specimen refusal, as appropriate.
I look forward to hearing from you.
Very truly yours,
Jeanine