Notation to File

TPG THE PET GLIDER

The Pet Glider LLC

RE: SERIAL NUMBER 88109544 TPG - one issue Thank you for your inquiry. Please note the following: SERIAL NUMBER 88109544 TPG: the specimen does not show the wording TPG for the Class 031 goods but does show it for the Class 005 goods. On the specimens submitted for Class 031 the mark is only shown as THE PET GLIDER but the mark here is TPG; TPG is not shown anywhere on the Class 031 specimens. Please let me know if you can submit a substitute specimen showing TPG for Class 031 or if you want to delete Class 031 and have the application approved for Class 005 only. SERIAL NUMBER 88109574 PET GLIDER: The specimen is acceptable (the wording THE is inconsequential) . However, the wording PET GLIDER is descriptive and so I recommend an amendment to the Supplemental Register (you cannot disclaim the entire mark). You can approve the amendment with a simple email back to me with your authorization. To learn more about the Supplemental Register, please review the information I’ve provided below and also visit: https://www.uspto.gov/trademark/laws-regulations/how-amend-principal-supplemental-register-1 SERIAL NUMBER 88109611 TPG THE PET GLIDER: for this application, you need to authorize the disclaimer of the descriptive wording “PET GLIDER” and submit an acceptable specimen because the specimen does not show the applied for mark (i.e., the top of the mark includes the word “THE” instead of “TPG”). In other words, the mark in this application is “TPG (Top of Circle) THE PET GLIDER (Bottom of Circle)” but the specimen just shows THE PET GLIDER (Bottom of Circle) and no TPG at all. The specimen must show the mark as applied for with TPG at the top and THE PET GLIDER under the design of the glider and within the bottom curve of the circle. I’m not sure what you mean by “how do I apply for the International Trademark on all three of these at this point” because the applications have already been submitted. The issue now is how to get these applications to registration. The above and my prior emails of this morning set out the issues to be resolved. Please let me know if you have any other questions regarding these applications. Otherwise, I look forward to hearing back from you regarding the above. Sincerely, /Ms. Tasneem Hussain/ Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant: (1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks. (2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks. (3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties. (4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs. (5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties. See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks& Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017). From: Sharon Jackson [mailto:jackson.ippilaw@gmail.com] Sent: Wednesday, December 19, 2018 2:08 PM To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV> Subject: Re: SERIAL NUMBER 88109544 TPG - one issue Dear Ms. Hussain - I am writing in regard to your emails regarding to the USPTO Serial numbers 88109611 (TPG Logo), 88109544 ("TPG") and 88109574 ("Pet Gloider"). (I will respond to the other emails for your records but will address all issues here.) If I understand the issue(s), the Logo should not include the word "The" in the Logo (#88109611) since the word "The" is not part of the trademark. However, the "TPG" which stands for "The Pet Glider" is acceptable? In order to proceed, you will need a Logo to include only the words "Pet Glider" since the phrase "The Pet Glider" is not acceptable, correct? However, to be clear, "TPG" is acceptable. Please advise. In addition, how do I apply for the International Trademark on all three of these at this point? Do I need to go through the USPTO separately to submit an application or more efficient to proceed through you? Thank you for your attention to these matters. Regards, Sharon Sharon K. Jackson Attorney At Law IPPI Law Sunset Boulevard Houston, Texas 77005 Tel: 713-542-7491 Jackson.IPPILaw@gmail.com IMPORTANT NOTICE: This electronic message, including any attachments, is covered by the Electronic Communication Privacy Act, 18 U.S.C. §§ 2510-2521, is CONFIDENTIAL, and may be protected by the ATTORNEY-CLIENT PRIVILEGE. This message is intended only for the persons or entities to which it is addressed. If you are not one of the intended recipients, please immediately delete or destroy all electronic and paper copies of this message in your possession and notify the sender at Jackson.IPPILaw@gmail.com. Any disclosure of privileged material in this message is inadvertent and does not constitute a waiver of that privilege. Any dissemination, distribution, copying, use of, or reliance upon information contained in this message by or to anyone other than the designated recipient is unauthorized and strictly prohibited.

NOTE TO THE FILE

SERIAL NUMBER: 88109611

DATE:    12/19/2018

NAME: thussain

NOTE:

From: Hussain, Tasneem
Sent: Wednesday, December 19, 2018 2:51 PM
To: 'Sharon Jackson' <jackson.ippilaw@gmail.com>
Subject: RE: SERIAL NUMBER 88109544 TPG - one issue

Thank you for your inquiry. Please note the following:

SERIAL NUMBER 88109544 TPG: the specimen does not show the wording TPG for the Class 031 goods but does show it for the Class 005 goods. On the specimens submitted for Class 031 the mark is only shown as THE PET GLIDER but the mark here is TPG; TPG is not shown anywhere on the Class 031 specimens. Please let me know if you can submit a substitute specimen showing TPG for Class 031 or if you want to delete Class 031 and have the application approved for Class 005 only.

SERIAL NUMBER 88109574 PET GLIDER: The specimen is acceptable (the wording THE is inconsequential) . However, the wording PET GLIDER is descriptive and so I recommend an amendment to the Supplemental Register (you cannot disclaim the entire mark). You can approve the amendment with a simple email back to me with your authorization. To learn more about the Supplemental Register, please review the information I’ve provided below and also visit:

http://www.gov.uspto.report/trademark/laws-regulations/how-amend-principal-supplemental-register-1

SERIAL NUMBER 88109611 TPG THE PET GLIDER: for this application, you need to authorize the disclaimer of the descriptive wording “PET GLIDER” and submit an acceptable specimen because the specimen does not show the applied for mark (i.e., the top of the mark includes the word “THE” instead of “TPG”). In other words, the mark in this application is “TPG (Top of Circle) THE PET GLIDER (Bottom of Circle)” but the specimen just shows THE PET GLIDER (Bottom of Circle) and no TPG at all. The specimen must show the mark as applied for with TPG at the top and THE PET GLIDER under the design of the glider and within the bottom curve of the circle.

I’m not sure what you mean by “how do I apply for the International Trademark on all three of these at this point” because the applications have already been submitted. The issue now is how to get these applications to registration. The above and my prior emails of this morning set out the issues to be resolved. Please let me know if you have any other questions regarding these applications. Otherwise, I look forward to hearing back from you regarding the above.

Sincerely,

/Ms. Tasneem Hussain/

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks& Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

From: Sharon Jackson [mailto:jackson.ippilaw@gmail.com]
Sent: Wednesday, December 19, 2018 2:08 PM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>
Subject: Re: SERIAL NUMBER 88109544 TPG - one issue

Dear Ms. Hussain -

I am writing in regard to your emails regarding to the USPTO Serial numbers 88109611 (TPG Logo), 88109544 ("TPG") and 88109574 ("Pet Gloider"). (I will respond to the other emails for your records but will address all issues here.)

If I understand the issue(s), the Logo should not include the word "The" in the Logo (#88109611) since the word "The" is not part of the trademark. However, the "TPG" which stands for "The Pet Glider" is acceptable? In order to proceed, you will need a Logo to include only the words "Pet Glider" since the phrase "The Pet Glider" is not acceptable, correct? However, to be clear, "TPG" is acceptable. Please advise.

In addition, how do I apply for the International Trademark on all three of these at this point? Do I need to go through the USPTO separately to submit an application or more efficient to proceed through you?

Thank you for your attention to these matters.

Regards,

Sharon

Sharon K. Jackson

Attorney At Law

IPPI Law

Sunset Boulevard

Houston, Texas 77005

Tel: 713-542-7491

Jackson.IPPILaw@gmail.com

IMPORTANT NOTICE: This electronic message, including any attachments, is covered by the Electronic Communication Privacy Act, 18 U.S.C. §§ 2510-2521, is CONFIDENTIAL, and may be protected by the ATTORNEY-CLIENT PRIVILEGE. This message is intended only for the persons or entities to which it is addressed. If you are not one of the intended recipients, please immediately delete or destroy all electronic and paper copies of this message in your possession and notify the sender at Jackson.IPPILaw@gmail.com. Any disclosure of privileged material in this message is inadvertent and does not constitute a waiver of that privilege. Any dissemination, distribution, copying, use of, or reliance upon information contained in this message by or to anyone other than the designated recipient is unauthorized and strictly prohibited.

On Wed, Dec 19, 2018 at 8:08 AM Hussain, Tasneem <Tasneem.Hussain@uspto.gov> wrote:

Good morning,

Please also note that a new specimen must be submitted for SERIAL NUMBER 88109611 because the specimen does not show the applied for mark (i.e., the top of the mark includes the word “THE” instead of “TPG”). I look forward to hearing from you.

Sincerely,

/Ms. Tasneem Hussain/

From: Hussain, Tasneem
Sent: Wednesday, December 19, 2018 9:00 AM
To: 'Jackson.IPPILaw@gmail.com' <Jackson.IPPILaw@gmail.com>
Subject: PET GLIDER marks: SERIAL NUMBER 88109574 and 88109611

Good morning, Ms. Jackson

I am the examining attorney assigned to the application for the proposed trademarks cited above. The following issue must be resolved before the applications can proceed to registration.

88109574: Trademark Act Section 2(e)(1) Refusal

Registration of the applied-for mark will be refused under Section 2(e)(1) because the mark is merely descriptive of the goods which are for pet gliders. The specimen of record clearly indicates that the wording describes the nature and intended user of the goods. If applicant amends the application to the Supplemental Register, however, then the refusal is not necessary.

88109611: Disclaimer

Applicant must disclaim the wording PET GLIDER because it is descriptive of applicant’s pet glider products as the identification of goods and the specimen of record confirm. TMEP §1213. The following is the standard format used by the Office:

No claim is made to the exclusive right to use “PET GLIDER” apart from the mark as shown.

TMEP §1213.08(a)(i).

CONCLUSION: If an authorized person (e.g., attorney of record, manager– please provide title) agrees to the above, I can prepare an Examiner's Amendment and approve the mark for publication immediately. If I do not hear from you by the close of business on FRIDAY, 5pm (EST), I will have to proceed with an Office Action but you may still respond by email thereafter to agree to the above. If you need additional time, please let me know and I can issue a Priority Action; you may then email me to resolve the issues. Thank you in advance for your response.

/Ms. Tasneem Hussain/

Trademark Examining Attorney

Sent to TICRS as Serial Number: 88109574