NOTE TO THE FILE
SERIAL NUMBER: 88126139
DATE: 01/05/2019
NAME: mmaresca
NOTE:
Searched:
X GoogleDiscussed file with
Applicant via:
X emailX Issued Examiner’s Amendment and entered changes in TRADEUPS
From: Matt Hinton [mailto:matthin@gmail.com]
Sent: Friday, January 04, 2019 6:36 PM
To: Maresca, Meredith <Meredith.Maresca@USPTO.GOV>
Subject: Re: USPTO Application for BI (U.S. Application Serial No. 88126139)
Yes. Thank you.
On Fri, Jan 4, 2019, 6:33 PM Maresca, Meredith <Meredith.Maresca@uspto.gov wrote:
Dear Mr. Hinton,
Thank you for getting back to me on this. No need for you to do anything at this time. Since you gave me the authorization to make the changes discussed below, I can enter them all in the record for you by Examiner’s Amendment.
Just to clarify, in addition to authorizing the proposed change to the mark description and the literal element field, do you want to amend the owner information to Matthew Hinton, individual, United States?
Once I have the confirmation, I will issue the Examiner’s Amendment for you making all of these changes.
Thanks!
Best,
Meredith Maresca
From: Matt Hinton [mailto:matthin@gmail.com]
Sent: Friday, January 04, 2019 6:17 PM
To: Maresca, Meredith <Meredith.Maresca@USPTO.GOV>
Subject: Re: USPTO Application for BI (U.S. Application Serial No. 88126139)
Yes I agree. Should I add the name and logo together like on this shirt. Sorry I'm new to this. I appreciate your help.
On Wed, Jan 2, 2019, 1:26 PM Maresca, Meredith <Meredith.Maresca@uspto.gov wrote:
Dear Mr. Hinton,
I am a trademark examining attorney for the U.S. Patent and Trademark Office. I am contacting you because I have examined the application for BI (U.S. Application Serial No. 88126139), and found a few issues that can be resolved informally (through email or by phone) by an Examiner’s Amendment.
First, the mark description must be amended because it is inaccurate. Specifically, the current mark description states that the mark is comprised of the wording BLACK INC CLOTHING CO. However, this wording does not appear in the mark drawing. Rather, the mark drawing is comprised only of the stylized letters BI. Descriptions must be accurate and identify only those literal and design elements appearing in the mark. See TMEP §§808.02, 808.03(d).
The following description is suggested, if accurate: The mark consists of a stylized backwards facing capital letter B, with a stylized lowercase letter “I” comprising the right vertical side of the letter “B.” The letters are in white and outlined in black.
Also, the “Literal Element” field in the application states that the mark is “Black Inc Clothing Co.” Like the mark description, this also is not accurate because that wording does not appear in the mark drawing. The “Literal Element” field describes the literal portions of the mark drawing. Here, only the letters “BI” are in the mark drawing, so the “Literal Element” field must be amended to reflect these letters only.
Second, the name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company. Applicant must clarify this inconsistency. If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record. For example, “Matthew Hinton, individual, United States.”
In order to avoid a formal Office action refusing registration for the reasons above, please get back to me no later than 4:00 pm (eastern standard time) on January 7 to let me know if you authorize the proposed changes. If so, I can enter them into the record by Examiner’s Amendment. This should resolve all issues in the application and place the application in condition for approval. If you need more time to respond, please let me know and I will issue a Priority Action, which will give applicant six months to file a formal response.
Thanks very much and have a wonderful day.
Best regards,
Meredith Maresca
Meredith Maresca
Trademark Examining Attorney
Law Office 109
(571) 272-8985