Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88022834

DATE:                                10/15/2018

NAME:                               ezaskoda

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:

Dear Examiner Zaskoda:

 

Thank you for your email. I am an attorney working with Michelle Marsh on the above-referenced applications.

 

Our client hereby consents to all of the disclaimers, the translation, and the amendments to the identification proposed in your message below.

 

We thank you for this opportunity to resolve the issues with our applications via Examiner’s Amendment, and for your continued favorable consideration.

 

Respectfully,

Natasha

 

Natasha Sardesai-Grant

Senior Attorney

 

Arent Fox LLP | Attorneys at Law

1301 Avenue of the Americas, Floor 42
New York, NY 10019

212.492.3320  DIRECT | 212.484.3990 FAX

natasha.sardesai-grant@arentfox.com | www.arentfox.com

 

From: Zaskoda, Erin [mailto:Erin.Zaskoda@USPTO.GOV]
Sent: Friday, October 12, 2018 8:10 PM
To: TMDocket <TMDocket@ARENTFOX.COM>
Subject: Trademark Applications for HOT ONES (U.S. Ser. Nos. 88022834 & 88137947), LOS CALIENTES (U.S. Ser. No. 88022815), Pepper Design (U.S. Ser. No. 88093124) and MOSTLY FOOTBALL & design (U.S. Ser. No. 88114674)

 

Dear Ms. Marsh,

 

Hello.  My name is Erin and I am the trademark examining attorney with the United States Patent and Trademark Office that is handling the above-referenced cases.  During the course of my initial review, there are a few issues I would like to try and resolve with you via Examiner’s Amendment if possible. 

 

Disclaimer

 

We will need a disclaimer of the descriptive wording “HOT”, “CALIENTE” and “FOOTBALL” in connection with the identified goods and/or services put into the record in the following format:

“No claim is made to the exclusive right to use “HOT” apart from the mark as shown.”

“No claim is made to the exclusive right to use “CALIENTE” apart from the mark as shown.”

“No claim is made to the exclusive right to use “FOOTBALL” apart from the mark as shown.”

Please confirm that the above-referenced disclaimers are acceptable.

 

Translation

We will need an English translation of the foreign wording in the mark.  Please let me know if the following is accurate/acceptable: 

                “The English translation of the wording “LOS CALIENTES” in the mark is “THE HOT ONES”.

 

Identification of Services

There is a small ambiguity with respect to the Pepper design applicant’s identification of services.  Please let me know if the following proposed amendment is acceptable/accurate: 

“Providing a website featuring news and commentary about in the food, beverages and popular culture; providing a website featuring non-downloadable videos in the fields of food, beverages and popular culture; providing a website featuring non-downloadable photographs; providing a website featuring online journals, namely, blogs and online columns about in the food, beverages and popular culture,” in International Class 41.

 

If you have any questions, please feel free to reach out. Otherwise, I look forward to hearing from you as soon as is possible but not later than  October 18, 2018. If you will not be able to provide the requisite information/authorization by this deadline, I would appreciate it if you could let me know so that I may issue Priority Actions in connection with these files, in which you will have six months to formally respond.

Thank you and I look forward to hearing from you.

Best,

 

Erin

 

 

Erin Zaskoda Dyer

Trademark Examining Attorney
Law Office 103

United States Patent and Trademark Office

erin.zaskoda@uspto.gov

 

Please be aware that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.