NOTE TO THE FILE
SERIAL NUMBER: 88086892
DATE: 09/21/2018
NAME: shelmers
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:
X 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: Jonathan O. Owens [mailto:jowens@hollp.com]
Sent: Friday, September 21, 2018 2:14 PM
To: Helmers, Sara <Sara.Helmers@USPTO.GOV>
Subject: RE: OFFICIAL USPTO EMAIL - Docket No. SCI-03300 - Trademark Application Serial No. 88086892 2COOL - Response Requested
Examiner Helmers:
Thank you for your email. Yes, that description would be acceptable.
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 N. Wolfe Rd.
Sunnyvale, CA 94086
phone (408) 530-9700
fax (408) 530-9797
This e-mail communication is intended for the addressee(s) only. Any person
who receives this e-mail unintentionally or inadvertently, is requested to
advise the sender of the error and delete the message. This message may be
protected under the ATTORNEY-CLIENT COMMUNICATION PRIVILEGE or the ATTORNEY
WORK PRODUCT PRIVILEGE. Unauthorized viewing of this message may violate a
court order and subject the viewer to fines, imprisonment or both.
From: Helmers, Sara [mailto:Sara.Helmers@USPTO.GOV]
Sent: Friday, September 21, 2018 11:02 AM
To: Jonathan O. Owens
Subject: RE: OFFICIAL USPTO EMAIL - Docket No. SCI-03300 - Trademark Application Serial No. 88086892 2COOL - Response Requested
Thanks for your quick response. I’d like to add a little more wording to make it clear that this item belongs in class 10, with medical devices. Would your client accept: “Hose adapter specifically designed for use with a medical cooling device for laser and light based medical devices to cool the patient during medical and surgical procedures”?
Sara
/Sara Anne Helmers/
Trademark Examining Attorney
Law Office 126
(571) 270-3639
From: Jonathan O. Owens [mailto:jowens@hollp.com]
Sent: Friday, September 21, 2018 12:01 PM
To: Helmers, Sara <Sara.Helmers@USPTO.GOV>
Subject: RE: OFFICIAL USPTO EMAIL - Docket No. SCI-03300 - Trademark Application Serial No. 88086892 2COOL - Response Requested
Examiner Helmers:
Thank you for your time this morning. I was able to discuss this with my client and we would like to go with the following identification of goods:
"Hose adapter for use with a medical cooling device for laser and light based medical devices used during medical and surgical procedures" in class 10.
Please let me know if you need anything further from me.
Thank you.
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 N. Wolfe Rd.
Sunnyvale, CA 94086
phone (408) 530-9700
fax (408) 530-9797
This e-mail communication is intended for the addressee(s) only. Any person
who receives this e-mail unintentionally or inadvertently, is requested to
advise the sender of the error and delete the message. This message may be
protected under the ATTORNEY-CLIENT COMMUNICATION PRIVILEGE or the ATTORNEY
WORK PRODUCT PRIVILEGE. Unauthorized viewing of this message may violate a
court order and subject the viewer to fines, imprisonment or both.
From: Helmers, Sara [mailto:Sara.Helmers@USPTO.GOV]
Sent: Monday, September 17, 2018 1:56 PM
To: Jonathan O. Owens
Subject: OFFICIAL USPTO EMAIL - Docket No. SCI-03300 - Trademark Application Serial No. 88086892 2COOL - Response Requested
OFFICIAL USPTO EMAIL - Trademark Application Serial No. 88086892 2COOL - Response Requested
Dear Mr. Owens,
I am the assigned trademark examiner for the above-referenced application. I have reviewed the application and the applicant must amend the identification of goods and provide a new specimen.
Specifically, to justify classification in class 10, the identification must specify that device is used by medical professionals during treatment of a patient. Applicant may adopt the following identification, if accurate: “Medical cooling device for laser and light based medical devices used during medical and surgical procedures” in class 10.
Additionally, the specimen of record is not acceptable to show use in commerce for the goods specified in the application. It shows the use of the mark 2Cool on an instruction sheet for a hose adaptor, and does not show the mark in association with the cooling device identified in the application. When submitting an alternate specimen, applicant should also note that package inserts are generally considered advertising material and not acceptable specimens for goods; instruction manuals can be acceptable specimens for goods only if they function as a part of the goods, such as a manual that is part of a kit for assembling the product. See TMEP §§ 904.03(j); 904.04(c).
Please contact me by email or phone by 1 PM EST on Thursday, September 20, 2018, to discuss applicant’s options for proceeding with this application.
Please do not hesitate to contact me should you have any questions. If I do not hear from you by that time, I will issue a formal Office Action on these issues.
Best,
Sara Helmers
/Sara Anne Helmers/
Trademark Examining Attorney
Law Office 126
(571) 270-3639