NOTE TO THE FILE
SERIAL NUMBER: 88059009
DATE: 01/15/2020
NAME: lroncoroni
NOTE:
Searched:
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:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X 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: john@alumitip.com <john@alumitip.com>
Sent: Wednesday, January 15, 2020 2:11 PM
To: Roncoroni, Lauren <Lauren.Roncoroni@USPTO.GOV>
Subject: RE: Priority Action - Sn. 88059009 SMOK
Yes, that's fine.
John Alumit
ALUMIT IP
135 S. Jackson Street, Suite 200
Glendale, CALIFORNIA 91205
(818) 244-4861
-------- Original Message --------
Subject: RE: Priority Action - Sn. 88059009 SMOK
From: "Roncoroni, Lauren" <Lauren.Roncoroni@USPTO.GOV>
Date: Wed, January 15, 2020 9:00 am
To: "john@alumitip.com" <john@alumitip.com>Dear Attorney Alumit,
Thank you for your response. I would additionally need to know whether you and client were amenable to moving forward under the Section 2(f) claim. Because the claim of acquired distinctiveness was made in alternative, pursuant to TMEP 1212.02(c), I would need authorization to accept the claim in order to issue an Examiner’s Amendment/Priority Action. Thank you.
Best,
Lauren Roncoroni
Lauren R. Roncoroni
Trademark Examining Attorney
Law Office 109
(571) 270-5661
From: john@alumitip.com <john@alumitip.com>
Sent: Wednesday, January 15, 2020 1:48 AM
To: Roncoroni, Lauren <Lauren.Roncoroni@USPTO.GOV>
Subject: RE: Priority Action - Sn. 88059009 SMOK
Dear Ms. Roncoroni,
Yes, our client is the owner and can claim ownership.
Sincerely,
John Alumit
ALUMIT IP
135 S. Jackson Street, Suite 200
Glendale, CALIFORNIA 91205
(818) 244-4861
-------- Original Message --------
Subject: Priority Action - Sn. 88059009 SMOK
From: "Roncoroni, Lauren" <Lauren.Roncoroni@USPTO.GOV>
Date: Tue, January 14, 2020 7:07 am
To: "john@alumitip.com" <john@alumitip.com>Dear Attorney Alumit,
Hope all is well. I am following-up regarding the below email. If you would kindly advise by end of day, it would be much appreciated; otherwise, I will need to issue a full Office Action. Please let me know if you have any further questions.
Best,
Lauren Roncoroni
Lauren R. Roncoroni
Trademark Examining Attorney
Law Office 109
(571) 270-5661
From: Roncoroni, Lauren
Sent: Friday, January 10, 2020 1:13 PM
To: john@alumitip.com
Subject: Priority Action - Sn. 88059009 SMOK
Dear Attorney Alumit,
Hope you had an enjoyable holiday season! As you may know, I am the examining attorney assigned to the above-referenced trademark application. Having reviewed the response, it has been determined that the Section 2(f) claim of acquired distinctiveness is acceptable in this case. Per TMEP 1212.02(c), as the claim was made in the alternative, I am reaching out to discuss whether your client would like to move forward under the Section 2(f) claim.
Furthermore, it has come to my attention that Registration No. 4692377 for SMOK AMAZING presents a likelihood of confusion with the applicant’s mark due to the differing owning entities of the marks. That said, due to the owning entities, I wanted to discuss whether your client was the owner of this registration.
With your response as to the Section 2(f) claim as well as to the likelihood of confusion presented by the above mark and the potential ownership thereof, I can issue a priority action indicating that the applicant will proceed with the Section 2(f) claim of acquired distinctiveness, and reference the Section 2(d) issue with the steps for claiming ownership of the mark, if applicable. Thank you, and I look forward to your response and any questions you may have.
Warm regards,
Lauren Roncoroni
Lauren R. Roncoroni
Trademark Examining Attorney
Law Office 109
(571) 270-5661
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