Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88024902

DATE:                                05/28/2019

NAME:                               ssettles

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           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: Lewis, Shaila E.
Sent: Tuesday, May 28, 2019 12:47 PM
To: Hurtado, Irene <IHurtado@McCarter.com>
Cc: Popovic, Deborah A. <DPopovic@McCarter.com>; Trubilla, Lina <LTrubilla@McCarter.com>
Subject: RE: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88024902 (MAZUMA)

 

Ms. Hurtado,

 

Thank you for your email. Please confirm that in Class 9 you intended to use the wording “mobile phone SIM gate being mobile phone SIM cards” and not “mobile phone SIM gate being mobile home SIM cards”.

 

Other than that, I’m happy to enter the examiner’s amendment.

 

Kind regards,

 

 

Shaila E. Lewis

Trademark Examining Attorney

Law Office 114

571-270-1527 (tel.)

571-270-2527 (fax)

 

 

 

From: Hurtado, Irene [mailto:IHurtado@McCarter.com]
Sent: Tuesday, May 28, 2019 10:45 AM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Cc: Popovic, Deborah A. <DPopovic@McCarter.com>; Trubilla, Lina <LTrubilla@McCarter.com>
Subject: RE: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88024902 (MAZUMA)

 

Dear Ms. Lewis,

 

Thank you for your call and your email below.  Our client is willing to amend the identification of goods/services in the above-referenced application as follows:

 

Class 9

Apparatus for recording, transmission or reproduction of sound or images; smartphone application software to value mobile phones, to trade in mobile phones, to purchase mobile phones, to sell mobile phones, and for loyalty reward programs relating to the valuation, trade in, purchase and selling of mobile phones; data processing equipment and computers; mobile telephones; cellular telephones; telecommunications apparatus and instruments, namely, wireless transmitters and receivers, modems, wireless routers, telephone call routers, battery chargers and mobile phone accessories in the nature of hands-free kits for phones, cell phone cases, and headsets for cellular and mobile phones; electronic downloadable publication, namely, pdf readable documents in the field of valuing, trading in, purchasing and selling mobile phones and mobile phone accessories; parts and fittings for mobile phones, namely, mobile phone batteries, mobile phone screens, mobile phone battery chargers, mobile phone front cameras, mobile phone rear cameras, mobile phone microphones, mobile phone SIM gate being mobile home SIM cards, and mobile phone cards with integrated circuits and mobile phone sensors cards.

 

Class 35

Advertising services; business management; business administration services; providing office functions; public relations; retail store services featuring mobile phones, telecommunication equipment and smartphone applications (Apps); retail store services featuring refurbished electronic apparatus and mobile phones; retail store services featuring recycled telecommunications equipment, apparatus and instruments; retail store services featuring refurbished telecommunications equipment, apparatus and instruments; operation of incentive schemes, namely, incentive award programs to promote the sale of products and services of others, providing incentive award programs for customers through the issuance and processing of loyalty coupons for frequent use of participating businesses, providing incentive award programs through issuance and processing of loyalty points for purchase of a company’s goods and services, arranging and conducting incentive reward programs to promote the sale of mobile phones and telecommunications equipment; dissemination of advertising for others via an on-line electronic communications network; providing an on-line searchable database featuring mobile phones and telecommunications equipment being offered for sale; providing an on-line searchable ordering guide in the nature of a database featuring mobile phones and telecommunications equipment for sale, and buyer/seller location information; database management services, including those relating to database aggregation and integration; the bringing together, for the benefit of others, a variety of goods in the nature of mobile phones and telecommunications equipment enabling customers to conveniently view and purchase those goods by means of telecommunications and an Internet website; promoting public awareness of environmental issues and initiatives; information, consultancy and advisory services in the field of operation and administration of telecommunications systems and networks.

 

Class 37

Installation, repair and refurbishment of telephones and electronic apparatus in the field of telecommunications computer hardware, none of the aforementioned services relating to online games, games for mobile phones, games for laptops, games for mobile digital devices, gaming and amusement machines; refurbishment of mobile phones; refurbishment of telecommunications hardware equipment, apparatus and instruments; information, consultancy and advisory services in relation to the installation, repair, and refurbishment of telephones and electronic telecommunications computer hardware.

 

Class 38

Cellular telephone communication; rental of telecommunications equipment; rental of telephones; provision of internet access via broadband optical or wireless networks; information, consultancy and advisory services in the field of telecommunications.

 

Class 40

Recycling; recycling of consumer goods; recycling of mobile phones; safe disposal services, namely, recycling and destruction of mobile phones; destruction of waste materials; disposal services, namely, recycling and destruction of surplus goods; information, consultancy and advisory services in the field of destruction of products and recycling.

 

Class 42

Design and development of computer hardware and software, none of these services relating to online games, games for mobile phones, games for laptops, games for mobile digital devices, gaming and amusement machines; scientific advisory services in the field of environmental protection; scientific advisory services in the field of environmental pollution; data-acquisition and collection of information for environmental protection research purposes; scientific research in the field of environmental conservation; scientific research in the field of environmental protection; product testing of mobile phones for others; product testing of telecommunications equipment, apparatus and instruments for others; information, consultancy and advisory services in the field of the design and development of computer hardware and software, environmental pollution, environmental protection, and product testing.

 

Please confirm receipt of this email and that the above-proposed amendments are acceptable and can be made by way of an examiner’s amendment.

 

Thank you.

 

Regards,

Irene Hurtado

 

 

 

Irene Hurtado | Special Counsel McCARTER & ENGLISH, LLP Worldwide Plaza, 825 Eighth Avenue, 31st Floor | New York, New York 10019 T: 212-609-6918 F: 212-416-5158 ihurtado@mccarter.com | www.mccarter.com  | LinkedIn BOSTON | HARTFORD | STAMFORD | NEW YORK | NEWARK EAST BRUNSWICK | PHILADELPHIA  | WILMINGTON | WASHINGTON, DC Think Green! Please consider the impact on the environment before printing this e-mail.

 

 

 

From: Lewis, Shaila E. [mailto:Shaila.Lewis@USPTO.GOV]
Sent: Friday, May 24, 2019 6:38 PM
To: Hurtado, Irene
Subject: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88024902 (MAZUMA)

 

Dear Ms. Hurtado,

 

We just spoke regarding the above-referenced case. The amendments made to the identification of goods and services in the April 25, 2019, response to office action enabled me to withdraw the Section 2(d) refusal as to U.S. Registration Nos. 4427516, 4561410, 4508801, 4759666, 3489836, and 3941742. However, the refusal as to U.S. Registration No. 4415186 must remain because the business services are related to the registrant’s tax accountancy and related services.

 

Additionally, the identification of goods and services must be further amended as follows:

 

Class 9:

 

The wording “telecommunications apparatus and instruments, namely, wireless transmitters and receivers, modems, wireless routers, telephone call routers, chargers and mobile phone accessories” must be amended to specify the type of “chargers” and list the specific “mobile phone accessories” using their common commercial or generic names. If accurate, applicant may amend to: “Telecommunications apparatus and instruments, namely, wireless transmitters and receivers, modems, wireless routers, telephone call routers, battery chargers and mobile phone accessories in the nature of hands-free kits for phones, cell phone cases, and headsets for cellular and mobile phones”.

 

The wording “parts and fittings for mobile phones, namely, mobile phone batteries, mobile phone screens, mobile phone chargers, mobile phone front cameras, mobile phone rear cameras, mobile phone microphones, mobile phone sim gate, and mobile phone circuits and mobile phone sensors” must be amended to specify the type of chargers and clarify the purpose of the “mobile phone circuits and mobile phone sensors” and “mobile phone sim gate.” If accurate, applicant may amend to: “Parts and fittings for mobile phones, namely, mobile phone batteries, mobile phone screens, mobile phone battery chargers, mobile phone front cameras, mobile phone rear cameras, mobile phone microphones, mobile phone SIM gate being mobile phone SIM cards, and mobile phone cards with integrated circuits and mobile phone sensor cards”.

 

 

Class 35:

 

The wording “information, consultancy and advisory services in relation to all the aforesaid services” must be amended to specify the exact subject matter of the information, consultancy and advisory services. If accurate, applicant may amend to: “Information, consultancy and advisory services in the field of operation and administration of telecommunications systems and networks”.

 

Class 37:

 

The wording “Installation, repair and refurbishment of telephones and electronic apparatus, none of the aforementioned services relating to online games, games for mobile phones, games for laptops, games for mobile digital devices, gaming and amusement machines” must be amended to specify the exact nature of the “electronic apparatus.” If accurate, applicant may amend to: “Installation, repair and refurbishment of telephones and electronic apparatus in the nature of telecommunications computer hardware, none of the aforementioned services relating to online games, games for mobile phones, games for laptops, games for mobile digital devices, gaming and amusement machines”.

 

The wording “information, consultancy and advisory services in relation to all the aforesaid services” must be amended to specify the exact subject matter of the information, consultancy and advisory services. If accurate, applicant may amend to: “Information, consultancy and advisory services in relation to the installation, repair, and refurbishment of telephones and electronic telecommunications computer apparatus”.

 

Class 38:

 

The wording “information, consultancy and advisory services in relation to all the aforesaid services” must be amended to specify the exact subject matter of the information, consultancy and advisory services. If accurate, applicant may amend to: “Information, consultancy and advisory services in the field of telecommunications”.

 

Class 40:

 

The wording “information, consultancy and advisory services in relation to all the aforesaid services” must be amended to specify the exact subject matter of the information, consultancy and advisory services. If accurate, applicant may amend to: “Information, consultancy and advisory services in the field of destruction of products and recycling”. 

 

Class 42:

 

The wording “information, consultancy and advisory services in relation to all the aforesaid services” must be amended to specify the exact subject matter of the information, consultancy and advisory services. If accurate, applicant may amend to: “Information, consultancy and advisory services in the field of the design and development of computer hardware and software, environmental pollution, environmental protection, and product testing”.

 

If you would like to amend the Class 35 service to remove all services that are related to tax and business services, I would be able to withdraw the Section 2(d) refusal. Additionally, the identification requirements must be addressed.

 

Please let me know on or before May 29, 2019. If you have any questions, feel free to call or email.

 

Kind regards,

 

Shaila E. Lewis

Trademark Examining Attorney

Law Office 114

571-270-1527 (tel.)

571-270-2527 (fax)

 

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