NOTE TO THE FILE
SERIAL NUMBER: 88096839
DATE: 12/17/2018
NAME: reubank
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: Jarvis, Joshua [mailto:JJarvis@foleyhoag.com]
Sent: Monday, December 17, 2018 2:25 PM
To: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Cc: Burns, Joanna <jburns@foleyhoag.com>; US Trademark <USTrademark@foleyhoag.com>
Subject: RE: USPTO Trademark Application No. 88096839 (JUSTICE IS BEAUTY) 94576-004-US-01
Dear Rebecca,
Thanks for your email – please go ahead and issue the Examiner’s Amendment. Thanks again!
Josh
Joshua S. Jarvis | Partner
FOLEY HOAG LLPSeaport West | 155 Seaport Boulevard | Boston, Massachusetts 02210-2600
617 832 3018 direct | 617 832 1000 main | 617 832 7000 faxjjarvis@foleyhoag.com | www.foleyhoag.com
Follow Me on Twitter® | Connect with Me on LinkedIn® | Follow Our Trademark and Copyright Blog
From: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Sent: Monday, December 17, 2018 2:10 PM
To: Jarvis, Joshua <JJarvis@foleyhoag.com>
Cc: Burns, Joanna <jburns@foleyhoag.com>; US Trademark <USTrademark@foleyhoag.com>
Subject: RE: USPTO Trademark Application No. 88096839 (JUSTICE IS BEAUTY) 94576-004-US-01
Good afternoon,
The Class 9 and 41 proposals look ok. With your permission, I will amend the identification to:
Class 9: Downloadable e-books on the subject of using architecture, design, and construction to promote social, economic, political, environmental, and human welfare; prerecorded video disks containing video on the subject of using architecture, design, and construction to promote social, economic, political, environmental, and human welfare.
Class 37: Construction of buildings; construction supervision; providing a website featuring information in the fields of construction and construction supervision; providing a website featuring construction and construction supervision information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Class 41: Educational services, namely, seminars, lectures, and exhibitions in the field of architecture, design, and construction; providing online videos on the subject of using of architecture, design, and construction to promote social, economic, political, environmental, and human welfare.
Class 42: Architectural design; architectural services; Architectural research; Providing a website featuring information in the field of architectural design; providing a website featuring architectural design information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Thank you,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577
From: Jarvis, Joshua [mailto:JJarvis@foleyhoag.com]
Sent: Sunday, December 16, 2018 6:46 PM
To: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Cc: Burns, Joanna <jburns@foleyhoag.com>; US Trademark <USTrademark@foleyhoag.com>
Subject: RE: USPTO Trademark Application No. 88096839 (JUSTICE IS BEAUTY) 94576-004-US-01
Dear Rebecca,
Thanks very much for your email, and for speaking with me last week. With respect to Classes 37 and 42, my client accepts your proposed changes in order to clarify that the services are not Class 35 promotional services:
Class 37: Construction of buildings; construction supervision; providing a website featuring information in the fields of construction and construction supervision; providing a website featuring construction and construction supervision information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Class 42: Architectural design; architectural services; Architectural research; Providing a website featuring information in the field of architectural design; providing a website featuring architectural design information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
With respect to the Classes 9 and 41, my client is not willing to make such drastic changes because the “promotion of” language has no effect on the Class. In other words, downloadable e-books and prerecorded videos can relate to “promotion of” things without affecting their classification. The same goes with providing online videos in Class 41 (it doesn’t matter what the videos are about). However, we have added some clarifying language that we think will be helpful, and my client will otherwise agree to some of the minor changes you have proposed:
Class 9: Downloadable e-books on the subject of using architecture, design, and construction to promote social, economic, political, environmental, and human welfare; prerecorded video disks containing video on the subject of using architecture, design, and construction to promote social, economic, political, environmental, and human welfare.
Class 41: Educational services, namely, seminars, lectures, and exhibitions in the field of architecture, design, and construction
for the promotion of social, economic, political, environmental, and human welfare; providing online videos on the subject of using of architecture, design, and construction to promote social, economic, political, environmental, and human welfare.
We hope that these proposed revisions are acceptable – many thanks!
Sincerely,
Josh
Joshua S. Jarvis | Partner
FOLEY HOAG LLPSeaport West | 155 Seaport Boulevard | Boston, Massachusetts 02210-2600
617 832 3018 direct | 617 832 1000 main | 617 832 7000 faxjjarvis@foleyhoag.com | www.foleyhoag.com
Follow Me on Twitter® | Connect with Me on LinkedIn® | Follow Our Trademark and Copyright Blog
From: Eubank, Rebecca [mailto:Rebecca.Eubank@USPTO.GOV]
Sent: Thursday, December 13, 2018 2:58 PM
To: US Trademark <USTrademark@foleyhoag.com>
Cc: Burns, Joanna <jburns@foleyhoag.com>
Subject: USPTO Trademark Application No. 88096839 (JUSTICE IS BEAUTY)
Dear Joshua Jarvis,
Per our conversation this afternoon, we are looking for a way to amend the proposed language in the identification for application No. 88096839 (JUSTICE IS BEAUTY) so that it is clear the applicant’s primary service is not promotional. To that end, applicant may amend to the following, if accurate:
Class 9: Downloadable e-books on architecture, design, and construction relating to buildings and structures in the social, economic, political, environmental, and human welfare fields; prerecorded video disks containing architecture, design, and construction videos relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Class 36: Charitable fundraising services
Class 37: Construction of buildings; construction supervision; providing a website featuring information in the fields of construction and construction supervision; providing a website featuring construction and construction supervision information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Class 41: Educational services, namely, seminars, lectures, and exhibitions in the field of architecture, design, and construction
for the promotion of social, economic, political, environmental, and human welfare; providing online videos in the fields of architecture, design, and construction relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Class 42: Architectural design; architectural services; Architectural research; Providing a website featuring information in the field of architectural design; providing a website featuring architectural design information relating to buildings and structures in the social, economic, political, environmental, and human welfare fields
Please let me know if these changes are acceptable and I can make the necessary amendments through an examiners amendment. If you have any questions or to discuss further, please contact me at the phone/email below.
Your prompt response by close of business on December 18 is appreciated.
Regards,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577
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