Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88088737

DATE:                                12/06/2018

NAME:                               abenzmiller

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: Benzmiller, Andrew
Sent: Thursday, December 06, 2018 4:59 PM
To: 'Johnson, Nathan' <njohnson@bradley.com>; IP Docketing <IPDocketing@bradley.com>
Subject: RE: University of Alabama trademarks

 

Mr. Johnson,

 

Thank you for attending to all of these issues so promptly, and I would like to return your compliment about professional courtesy.

 

Your responses in your 1:51pm and 3:18pm emails below fully address all of the outstanding issues in all of the applications.  Specifically:

 

88077182 BAMA CUTS:

-          I will enter separate disclaimers of BAMA and CUTS

 

88088089 THE CRIMSON STANDARD:

-          I will amend “bibs” in the identification of goods to “cloth bibs; bibs not of paper.”

 

88088737 column design mark (black & white) and

88088786 column design mark (color) and

88088798 UNIVERSITY OF ALABAMA SYSTEM and

88088810 INDIVIDUALLY DISTINCT… :

-          All of the identification changes in your 3:18pm email are acceptable.  I will classify the goods appropriately

-          I will add Classes 12 and 14 and will have the fees for the two additional classes charged as you instruct to your firm’s Deposit Account Number 50-0954.

 

I will send Examiner’s Amendments to formalize all of these changes, after which all of these applications can be approved for publication.

 

Thank you again, and with best regards,

Andrew

 

From: Johnson, Nathan [mailto:njohnson@bradley.com]
Sent: Thursday, December 06, 2018 3:18 PM
To: Benzmiller, Andrew <Andrew.Benzmiller@USPTO.GOV>; IP Docketing <IPDocketing@bradley.com>
Cc: Johnson, Nathan <njohnson@bradley.com>
Subject: RE: University of Alabama trademarks

 

RE: 

88088737 column design mark (black & white) and

88088786 column design mark (color) and

88088798 UNIVERSITY OF ALABAMA SYSTEM and

88088810 INDIVIDUALLY DISTINCT… :

 

Examiner Benzmiller:

 

Once again, please pardon my earlier delay in response on the issues you raised today for these four applications.  I now have instructions from my client contact, as follows:

 

* From Class 6:    The client authorizes the addition of new Classes 12 and 14.  Please add these two new classes, and move the descriptions of key rings, key chains, and license frames to that class as appropriate in your judgment.  Fees for the new classes can be drawn from our deposit account (details below).

* For Class 25:     Similarly to the correspondence below, please consider if you can approve “cloth bibs; bibs not of paper” in place of “bibs.” See my remarks and citation below addressing the issue.

* For Class 18:    Please move the “…key chains” descriptions to Class 14 (authorization for the addition of which is provided above)

* For Class 26:    Please make the amendments you suggest to retain the items in Class 26.  For “brooches,” please make the Class 26-compliant amendment and also add “jewelry brooches” in Class 14 (authorization for the addition of which was provided above).

 

Additional class fees may be charged to my firm’s Deposit Account.   

I hereby authorize the Director of the United States Patent and Trademark Office to charge these fees to Deposit Account Number 50-0954.  The following is my signature for this authorization:  /Nathan W Johnson/

 

Thank you for your work on these various applications. I believe I have responded to each matter raised.  Of course, if you need to discuss anything further, please feel free to call or e-mail.

 

Nathan W. Johnson
Partner | Bradley
njohnson@bradley.com
205.521.8369

Assistant at x8270


 

 

From: Johnson, Nathan
Sent: Thursday, December 06, 2018 1:51 PM
To: Benzmiller, Andrew <Andrew.Benzmiller@USPTO.GOV>; IP Docketing <IPDocketing@bradley.com>
Cc: Johnson, Nathan <njohnson@bradley.com>
Subject: RE: University of Alabama trademarks

 

Examiner Benzmiller:

 

Thank you, both for the call today and your continued professional courtesies. 

 

1.       Regarding 88088089 BAMA CUTS:  The separate disclaimers for “cuts” and for “Bama,” are approved.  Thank you for your consideration.

 

2.       For 88/088,089 (THE CRIMSON STANDARD):

I have authorization to propose “cloth bibs; bibs not of paper” in place of “bibs.”  As you note, “Cloth Bibs” remains in Class 25, and I see the Goods ID Manual also lists as approved text “bibs not of paper” in class 25.  (See Term ID 025-936 in the manual).  If this meets with your approval, an examiner’s amendment on this basis is approved for this application.

 

3.       For         88088737 column design mark (black & white);

88088786 column design mark (color);

88088798 UNIVERSITY OF ALABAMA SYSTEM;

88088810 INDIVIDUALLY DISTINCT…

 

I coordinate with a different contact person at my client for these four items, from whom I am still awaiting feedback.  I expect to make a similar suggestion regarding “bibs” as above in those, but I still need to get feedback on the other items).  I also expect that we can resolve all of these issues by examiner’s amendment by tomorrow AM, latest.  I do apologize for the delay in reply on these applications, and will get word to you as soon as possible.  I am conscious of the timing.

 

Nathan W. Johnson
Partner | Bradley
njohnson@bradley.com
205.521.8369

Assistant at x8270


 

 

From: Benzmiller, Andrew [mailto:Andrew.Benzmiller@USPTO.GOV]
Sent: Thursday, December 06, 2018 11:09 AM
To: Johnson, Nathan <njohnson@bradley.com>; IP Docketing <IPDocketing@bradley.com>
Subject: FW: University of Alabama trademarks

 

[External Email]

Mr. Johnson,

 

Thank you for speaking with me this morning to discuss the BAMA CUTS mark and to confirm the amendments in my Dec. 4 email.  In addition to the items listed in that email, there are several reclassifications listed immediately below – my apologies for not including those in my first email.  With your approval, I can include those changes in the examiner’s amendments.  Several of the items may involve adding classes - if the applicant chooses to do so and you would like to have the fee charged to your firm’s deposit account, please let me know.

 

With best regards,

Andrew

 

 

*****

 

88088089 BAMA CUTS:

·       separate disclaimers of BAMA and CUTS are acceptable.  (Because the goods in the prior BAMA registrations are unrelated to the hair salon/barber shop services in the BAMA CUTS application, a 2(f) claim as to BAMA based on the prior BAMA registrations would not apply to the BAMA CUTS mark.)

 

88088089 THE CRIMSON STANDARD:

·       amend “bibs” to “cloth bibs” to keep the goods in Class 25

 

88088737 column design mark (black & white) and

88088786 column design mark (color) and

88088798 UNIVERSITY OF ALABAMA SYSTEM and

88088810 INDIVIDUALLY DISTINCT… :

·       As filed in class 6: Key rings and metal and non-metal key chains belong in Class 14.  License frames (of all kinds) belong in Class 12.  The applicant may either delete these goods or add Classes 12 and 14.

·       As filed in class 25: amend “bibs” to “cloth bibs” to keep the goods in Class 25

·       As filed in Class 18: leather and imitation leather key chains belong in Class 14

·       As filed in Class 26: amend “pins” to “ornamental novelty pins”; amend “clothing patches” to “ornamental or embroidered patches for clothing”; amend “brooches” to “brooches for clothing” in Class 26 or “jewelry brooches” in Class 14.”