Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            87907715

DATE:                                08/05/2018

NAME:                               lkolodner

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       X   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:

From: Ferguson, Lisel M. [mailto:lisel.ferguson@procopio.com]
Sent: Saturday, August 04, 2018 6:36 PM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Cc: Docketing <Docketing@procopio.com>; Andelson, Emily M. <Emily.Andelson@procopio.com>
Subject: RE: US Trademark Application: TROPHY TRUCK - Sn. 87907715

 

Dear Examiner Kolodner,

 

I agree with the amendments that you propose below.  I give you authorization to enter an Examiners Amendment. Should you  have any further questions please let me know.  I appreciate your detailed email.

 

Sincerely,

 

Lisel

 

 

LISEL M. FERGUSON
PARTNER
▬
P. 619.515.3207 | F. 619.744.5407 | lisel.ferguson@procopio.com
525 B STREET, SUITE 2200, SAN DIEGO, CA 92101
View Profile | LinkedIn | procopio.com

 

 

 

From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: Friday, August 03, 2018 10:04 AM
To: Ferguson, Lisel M.
Cc: Docketing
Subject: US Trademark Application: TROPHY TRUCK - Sn. 87907715

 

Good Afternoon Ms. Ferguson:

 

I am the attorney from the United States Patent and Trademark Office assigned to examine the above-referenced U.S. Trademark Application. I left a voicemail a few minutes ago but I am following up in case email is more convenient.

 

I have searched the Office’s database of registered and pending marks and have found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, there are a few issues with the application that needs to be addressed before it can move forward towards publication. If you are amenable, the issues described below can be addressed by Examiner’s Amendment.

 

1. Amended Identification of Goods and/or Services

 

I recognize that the identification is identical to the identification used in the application for TROPHY TRUCK that recently abandoned. However, there have been numerous changes to ID manual and certain items are now overly broad. If accurate, are you willing to amend the identification of goods to read:

 

Class 9 (unchanged): Sunglasses and protective eyewear; goggles for motorsports; protective gear for motorsports, namely, protective helmets and protective gloves; articles of protective clothing with built in armor for protection against accident or injury for use in motorsports and off-road racing; computer application software for electronic, mobile and wireless devices for providing information on motorsports; digital media, namely, downloadable mobile software applications for use on mobile and wireless devices and portable multimedia viewing devices and terminals featuring information on motorsports; downloadable electronic publications in the nature of newspaper, magazine, newsletters, journals, articles, booklets, brochures, pamphlets, reference guides, circulars, bulletins in the field of motorsports; audio and video recordings in the field of motorsports; computer game software and programs, cartridges, discs, video game cartridges in the field of motorsports; computer software for playing video games and computer games with others via a global computer or communication network and for accessing and browsing global computer and communication networks; computer programs, namely, game software for use on computers and video game devices; graduated plastic rulers

 

Class 12: Mud guards for motor vehicles; Tires, wheels, wheel hubs, hub caps, and hub cap covers for vehicles; Valves for vehicle covers; Motor vehicle suspension assemblies comprised of axles, spring perches, coilovers and air suspension valves; Shocks for motor vehicles; Aftermarket automobile accessories, namely, arm rests for vehicle seats, car interior organizer bags, nets and trays specifically adapted for fitting in vehicles, luggage bags specially adapted for fitting in the trunk of vehicles, vehicle custom grills, truck bed extender and storage box, combination transmission control units and gear shifting mechanisms for automatic transmissions, security devices in the nature of metal or steel plates affixed to the vehicle to reinforce or strengthen door handles, latches and locks or lock cylinders; gas caps for vehicles; Gear lever knobs for vehicles; Fitted liners and covers for vehicles; Dune buggies, trucks and off-road vehicles for motorsports, and structural parts therefor

 

Class 16: Printed matter and paper articles, namely, bumper stickers, calendars, comic books, decals, Novelty driver's identification cards, book covers, memo pads, pens, pencils, mounted and unmounted photographs, plastic drawing rulers, paper placemats, notebooks, three ring binders, sports trading cards, laminated paper banners, laminated paper signs, pencil holders in the form of pencil bags, Rubber erasers; Pamphlets, brochures, newsletters, journals, and magazines featuring auto racing; Photographs; Stationery; Almanacs; Annual books featuring auto racing; Autograph books; Bags of paper or plastics for packaging; Bookends; Booklets featuring auto racing; Bookmarkers; Books featuring auto racing; Books for children; Bottle wrappers of cardboard or paper; Brochures featuring auto racing; Desktop business card holders; Paper gift cards; Note cards; Cartoon prints; Catalogues in the field of featuring auto racing; Charts in the field of auto racing; Checkbook wallets and covers; Clipboards; Coasters of paper; Coloring books; Passport covers; Credit card without magnetic coding other than encoded or magnetic for use in relation to electronic transfer of funds; Leather diary and book covers;  Desk accessories made of leather, namely, diary covers, book covers, leather pen holders; Diaries; Envelopes; Informational flyers in the field of auto racing; Folders for papers; Printed forms; Graphic art reproductions and prints; Paintings framed or unframed; Paperweights; Passes, namely, entry tickets; Pennants of paper; Event programs; Reference books in the field of auto racing; Road maps; Route maps; Scrapbooks; Scratch cards; Sticker albums; Stickers; Table cloths of paper; Table napkins of paper; Tear-off calendars; Printed tickets; Towels of paper; Iron-on transfers; Printed vouchers; Wall calendars; Wrapping paper; Paper shopping bags; Plastic shopping bags; Paper baby bibs

 

Class 18 (unchanged): Back packs, fanny packs, credential holders, wallets, bags, namely, all-purpose carrying bags, athletic bags, general purpose bags for travel, waist bags, gym bags; duffle bags, sports bags, travel bags, organizer bags and briefcases, and luggage

 

2. Disclaimer of “TRUCK”

 

Is your client willing to disclaim “TRUCK” as it did in the previous application that was recently abandoned?

 

With your authorization, I can enter the amendments myself by Examiner's Amendment and move the application forward. You can authorize the proposed Examiner's Amendment by return email or by calling me at the number below.

 

Entering the required amendments in this manner would eliminate the need for issuance of a formal Office Action and for filing of a formal Response to Office Action.

 

If I do not hear from you by close of business on Tuesday, August 7, I will issue an Office Action requiring the amendments and you will have six months to respond either in writing or via telephone if an Examiner’s Amendment is an appropriate response at that point.

 

If I can answer any questions or be of any assistance, please do not hesitate to contact me.

 

Best regards,

 

/Lou Kolodner/

 

(571) 272-7562

 

 

Louis Kolodner

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 122

Email: Louis.Kolodner@uspto.gov

Phone: (571) 272-7562

 

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