NOTE TO THE FILE
SERIAL NUMBER: 88024078
DATE: 11/29/2018
NAME: kray
NOTE:
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPS
From: Ray, Kimberly
Sent: Thursday, November 29, 2018 1:01 PM
To: 'Samman, Luna' <Luna.Samman@arentfox.com>
Cc: Gordon, Portia <Portia.Gordon@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Luna,
That sounds great. I will get these entered and the applications moving forwards now.
Thanks for all of your time and correspondence on these.
Sincerely,
Kim Ray
Attorney Advisor in Law Office 122
Mentor in Law Office 127
United States Patent and Trademark Office
(571) 272-7834
Office 6A74
Please note 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.
From: Samman, Luna [mailto:Luna.Samman@arentfox.com]
Sent: Thursday, November 29, 2018 10:57 AM
To: Ray, Kimberly <Kimberly.Ray@USPTO.GOV>
Cc: Gordon, Portia <Portia.Gordon@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Kim,
Thanks for your quick response. If you are willing to enter Examiner’s Amendments for these applications, we would like to enter the following amendments for the applications as indicated below:
1. Amendments to Identification of Goods (all three applications)
Class 9: Data storage media, namely, integrated circuit memory cards; integrated circuits; semiconductors; electronic integrated circuit memory card readers and writers; personal computers; audio recorders, namely, digital audio recorders, mp3 recorders; video recorders, namely, digital video recorders, digital video cameras, digital camcorders; digital still cameras; digital photo viewers; digital cameras; video cameras; DVD recorders; DVD players; voice recorders, namely, digital voice recorders, digital voice memo, all using IC memory cards; interface devices for computers, namely, USB card readers and writers; movie projectors and data projectors, namely, LCD projectors, movie projectors, and digital photo projectors; memory card adapters
2. Description of the Marks
We propose the following amended descriptions:
- SDUC Logo: The mark consists of the word “SD UC” in a stylized lettering font with “SD” stacked above “UC”.
- microSDUC Logo: The mark consists of the word “MICRO SD UC” in a stylized lettering font with ”MICRO” stacked above “SD”, which is stacked above “UC”.
- SDHC Logo: The mark consists of the word “SD HC” in a stylized lettering font with “SD” stacked above “HC”.
3. Disclaimer Requirement (microSDUC Stylized)
· We agree that the word “MICRO” be disclaimed
Please let us know if you have any questions. Otherwise, we look forward to receiving the Examiner’s Amendments.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Ray, Kimberly [mailto:Kimberly.Ray@USPTO.GOV]
Sent: Tuesday, November 27, 2018 12:57 PM
To: Samman, Luna <Luna.Samman@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Luna,
I think it would be okay to use different wording that just refers to the stylized lettering. The more important point is accurately describing the letters as separate, with “SD” above the other two letters in the marks.
Sincerely,
Kim Ray
Attorney Advisor in Law Office 122
Mentor in Law Office 127
United States Patent and Trademark Office
(571) 272-7834
Office 6A74
Please note 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.
From: Samman, Luna [mailto:Luna.Samman@arentfox.com]
Sent: Tuesday, November 27, 2018 11:38 AM
To: Ray, Kimberly <Kimberly.Ray@USPTO.GOV>
Cc: Gordon, Portia <Portia.Gordon@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Kim,
I’m sorry to bug you on these applications again, but our client has asked about the description of the marks. We understand that you’ve asked us to amend the description to identify the stylization of the letter D as representing an optical disc, which appears to come from Reg. No. 2384407. If you look at SD-3C’s other registrations, that description is not included. We would prefer not to use your description as it refers to outdated technology and is not necessarily accurate. Please let me know if you would reconsider the requirement.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Samman, Luna
Sent: Friday, November 02, 2018 9:49 AM
To: 'Ray, Kimberly' <Kimberly.Ray@USPTO.GOV>
Cc: Berryman, Jimeelah D. <Jimeelah.Berryman@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Thank you Kim. We are awaiting instructions from our client and will get back as soon as we can.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Ray, Kimberly [mailto:Kimberly.Ray@USPTO.GOV]
Sent: Friday, November 02, 2018 9:37 AM
To: Samman, Luna <Luna.Samman@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Luna,
Upon further review, I think there are enough registered marks with this identification to support allowing it here.
If the other changes are acceptable, please respond formally or by email and I can still enter the changes for you.
Thank you for your email.
Sincerely,
Kim Ray
Attorney Advisor
United States Patent and Trademark Office
Law Office 122
(571) 272-7834
Office 6A74
Please note 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.
From: Samman, Luna [mailto:Luna.Samman@arentfox.com]
Sent: Thursday, November 01, 2018 12:14 PM
To: Ray, Kimberly <Kimberly.Ray@USPTO.GOV>; Berryman, Jimeelah D. <Jimeelah.Berryman@arentfox.com>
Subject: RE: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
Kim,
We are in receipt of your email below and Office Actions issued in connection with the above-referenced applications. Before we report this to our client, we have one question with respect to the identification of goods. Specifically, we do not believe that your requirement to further specify “memory card adapters” is necessary as there are many registrations, including those of the applicant, with that exact language already approved. If, despite this precedent, we must still amend this language, can we simply state “adapters for memory cards”?
We look forward to hearing from you.
Best regards,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Ray, Kimberly [mailto:Kimberly.Ray@USPTO.GOV]
Sent: Wednesday, October 24, 2018 3:42 PM
To: Berryman, Jimeelah D. <Jimeelah.Berryman@arentfox.com>
Cc: TMDocket <TMDocket@ARENTFOX.COM>
Subject: TM Application for "SD UC", "MICRO SD UC" & "SD HC" (serial nos. 88024078, 88024083 & 88132950)
This email is intended for Pamela M. Deese and/or any authorized party
United States Trademark Applications:
· Serial No. 88024078 — “SD UC”
· Serial No. 88024083 — “MICRO SD UC”
· Serial No. 88132950 — “SD HC”
Dear Ms. Deese,
I am the trademark examining attorney at the United States Patent and Trademark Office reviewing your above-referenced trademark application, and I wanted to discuss the following issues with you.
ALL APPLICATIONS - Identification of Goods: The application required amendments to the identification of goods because the current language is unacceptably indefinite. If the changes below, with amended language in underlined font, are acceptable, I will issue an examiner's amendment accordingly:
Class 9: Data storage media, namely, integrated circuit memory cards; integrated circuits; semiconductors; electronic integrated circuit memory card readers and writers; personal computers; audio recorders, namely, digital audio recorders, mp3 recorders; video recorders, namely, digital video recorders, digital video cameras, digital camcorders; digital still cameras; digital photo viewers; digital cameras; video cameras; DVD recorders; DVD players; voice recorders, namely, digital voice recorders, digital voice memo, all using IC memory cards; interface devices for computers, namely, USB card readers and writers; movie projectors and data projectors, namely, LCD projectors, movie projectors, and digital photo projectors; memory card adapters that convert one memory card connection to another
ALL APPLICATIONS - Description of the Mark: The description must identify all features in the mark. The current mark description is incomplete. Please let me know if you agree to the following amended description:
Serial No. 88024078 — “SD UC”
The mark consists of “SD UC” in a stylized font with “SD” over “UC” and with the “D” stylized to represents an optical disc design.
Serial No. 88024083 — “MICRO SD UC”
The mark consists of “MICRO SD UC” in a stylized font with ”MICRO” over “SD”, which is over “UC”, and with the “D” stylized to represents an optical disc design.
Serial No. 88132950 — “SD HC”
The mark consists of “SD HC” in a stylized font with “SD” over “HC” and with the “D” stylized to represents an optical disc design.
ONLY Serial No. 88024083 — “MICRO SD UC” - Disclaimer Requirement: The word “MICRO” should be disclaimed because it appears to be descriptive of your goods. The following disclaimer statement would be added to the record:
No claim is made to the exclusive right to use “MICRO” apart from the mark as shown.
If you agree to the amendments above, I can make the change for you via an Examiner’s Amendment and the application may proceed toward registration.
Please feel free to call or email me to discuss these issues further. Thank you!
Sincerely,
Kim Ray
Attorney Advisor
United States Patent and Trademark Office
Law Office 122
(571) 272-7834
Office 6A74
Please note 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.
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