NOTE TO THE FILE
SERIAL NUMBER: 87603291
DATE: 12/20/2017
NAME: lkolodner
NOTE:
Searched:
X Google
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:
X 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: Adam Hinkle [mailto:adam@creativeqt.net]
Sent: Wednesday, December 20, 2017 12:38 PM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Cc: Stephen Scherrer <stephen@scherrerpatentlaw.com>
Subject: Re: US Trademark Application: STUFF 'N SIT - 87603291
H Louis,
Thanks for your patience. I discussed the question with my attorney and he said that we have some arguments against the trademark being simply descriptive.
He asked if I can request from you an office action that we can respond to quickly outlining out thoughts on why we think the Trademark should be registered on the principal register.
Let me know when that is finished and we will respond as soon as we can.
Thanks so much,
Adam Hinkle
Adam Hinkle
Brand Manager Creative QT
719-459-3957
On Wed, Dec 20, 2017 at 10:27 AM, Kolodner, Louis <Louis.Kolodner@uspto.gov> wrote:
Good Morning Mr. Hinkle:
No apology necessary. Thanks for the prompt response.
I look forward to hearing from you after you consult with your attorney.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Adam Hinkle [mailto:adam@creativeqt.net]
Sent: Wednesday, December 20, 2017 11:25 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: Re: US Trademark Application: STUFF 'N SIT - 87603291
Hi Louis,
Sorry I haven't replied yet. I was hoping to get some guidance from my IP attorney. I will give him a call today and get back to you soon.
Thanks,
Adam
Adam Hinkle
Brand Manager Creative QT
On Wed, Dec 20, 2017 at 8:58 AM, Kolodner, Louis <Louis.Kolodner@uspto.gov> wrote:
Good Morning Mr. Hinkle:
I am writing to follow up on the email I sent yesterday regarding amending your application to the Supplemental Register.
Should I do the Examiner’s Amendment to amend the application to the Supplemental Register and move the mark forward?
If I do not hear back from you by close of business Thursday, December 21, I will refuse registration under Trademark Act Section 2(e)(1) because STUFF ‘N SIT is merely descriptive of your goods into which kids can “STUFF” their soft toys and then “SIT” on the bag.
I look forward to hearing from you soon.
Sincerely,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Kolodner, Louis
Sent: Tuesday, December 19, 2017 2:50 PM
To: 'adam@creativeqt.net' <adam@creativeqt.net>
Subject: US Trademark Application: STUFF 'N SIT
Good Afternoon Mr. Hinkle:
Thank you for taking the time to speak with me a few minutes ago.
Registration on the Supplemental provides the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
Please let me know if you would like me to do an Examiner’s Amendment so that your application can move forward on the Supplemental Register.
You can approve the amendment by responding to this email or by calling me at the number below.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562