NOTE TO THE FILE
SERIAL NUMBER: 88088099
DATE: 12/14/2018
NAME: xademi
NOTE:
Searched:
X Google
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 X 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: Ademi, Xheneta
Sent: Friday, December 14, 2018 9:11 AM
To: 'Max Kaganov' <max@kaganovlaw.com>
Subject: RE: United States Trademark Application Serial No. 88088099 / SM
Great; you should receive the Examiner’s Amendment shortly. You are very welcome!
Best regards,
Xheneta
Xheneta Ademi
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7151
xheneta.ademi@uspto.gov
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: Max Kaganov [mailto:max@kaganovlaw.com]
Sent: Friday, December 14, 2018 2:15 AM
To: Ademi, Xheneta <Xheneta.Ademi@USPTO.GOV>
Subject: Re: United States Trademark Application Serial No. 88088099 / SM
Dear Xheneta,
Thank you for speaking with me regarding this application. Please go ahead with the Examiner’s Amendment per your email below.
With best regards,
Max Kaganov
Registered Patent Attorney
5455 Tamiami Trail, Suite 255
Coral Gables, Florida 33134
max@kaganovlaw.com
305.563.4655Registered to practice in the State of Florida and before the United States Patent and Trademark Office.
On Dec 12, 2018, at 7:41 PM, Ademi, Xheneta <Xheneta.Ademi@USPTO.GOV> wrote:
This email is intended for Max Kaganov and/or any authorized party
United States Trademark Application Serial No. 88088099 / SM
Dear Attorney Kaganov:
It was great to speak with you regarding your application for SM. As I stated earlier, for the most part, the application looks great. There is one issue, but this is an issue that I can resolve on my end, by way of Examiner’s Amendment – I just need your permission to do so.
Identification of the Goods
There is a registration that poses a Section 2(d) likelihood of confusion with a portion of the goods in Class 016, namely, the “Adhesive tapes for stationery or household purposes; Adhesive packing tape for stationery or household use.” To avoid this partial refusal, Applicant has the option to delete these goods from the application. I propose that the identification is amended to read as follows:
Class 016: Notebook paper; Notebooks; Paper; Plastic or paper bags for household use; Ruled paper; Spiral-bound notebooks; Adhesive tape dispensers; Adhesive tape dispensers for household or stationery use; Drawer liners; General purpose plastic bags; Holders for adhesive tapes; Paper notebooks
Please note that the rest of the classes remain unchanged.
Do I have your permission to enter the suggested changes by way of Examiner’s Amendment? If you agree to the above amendments, I can enter the changes on our system and hopefully approve the application for publication. In the alternative, I can send out an Office action with a partial Section 2(d) refusal.
Please let me know, by phone or email, by the end of the day on Friday, if you agree to allow me to correct the above, or if you have any questions about the application.
I look forward to hearing from you!
Best regards,
Xheneta
Xheneta Ademi
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
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.