NOTE TO THE FILE
SERIAL NUMBER: 88133827
DATE: 01/15/2019
NAME: vriley
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
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:
Ms. Riley,
Thank you so much for your phone call and follow-up email on the client’s two applications.
With respect to the MAYBE BABY application, please revise the class 41 description of services to include: in the “field of family planning, parenting, adoption, assisted reproductive technology, and fostering children” (not just family planning)
Your proposed revision to Class 45 is acceptable.
With respect to the RAINBOW FAMILIES application, your proposed amendments are acceptable as proposed.
Thank you sincerely for your help. Please go ahead and issue an Examiner’s Amendment so the client’s marks can proceed.
Best regards,
Julia
Julia Anne Matheson
Partner
Hogan Lovells US LLP
Columbia Square555 Thirteenth Street, NW
Washington, DC 20004
Tel:
+1 202 637 5600
Direct:
Mobile:
+1 202 637 6441
+1 202 251 6920
Fax:
+1 202 637 5910
Email:
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From: Riley, Vanessa [mailto:Vanessa.Riley@USPTO.GOV]
Sent: Tuesday, January 15, 2019 10:44 AM
To: DC PTO Trademark Mail
Cc: Matheson, Julia
Subject: Trademark Application for Rainbow Families and Corresponding Design Mark (Serial No. 88133824 and 88133826) and Maybe Baby (Serial No. 88133827)
Re: Trademark Application for Rainbow Families and Corresponding Design Mark (Serial No. 88133824 and 88133826) and Maybe Baby (Serial No. 88133827)
Dear Ms. Matheson,
I am the Trademark Examining Attorney at the U.S. Patent and Trademark Office examining this application and wanted to discuss the following issues with you:
Amended Identification of Services for RAINBOW FAMILIES and corresponding design mark (88133826): Some of the wording in the identification must be further specified to ensure it is properly classified and definite. Specifically, the wording “LGBTQ” in all classes is indefinite because it’s not clear what the abbreviation stands for. Further, the wording regarding “membership services”, “educational services” and “counseling and support services” is indefinite because the nature of the services is unclear. Finally, the wording “and/or” which is generally not accepted in a description of services.
Please let me know if you agree to the following suggested identification of services, if accurate:
Class 35: Association and membership services, namely, promoting the interests of lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals through public education, advocacy, community support and organization; Membership club services, namely, providing an on-line resource computer database featuring referrals in the field of family-planning and parenting directed to lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals; business services, namely, maintenance of data in a resource database featuring referrals directed to lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals
Class 36: Charitable fundraising to support programs for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals
Class 38: Providing on-line electronic bulletin boards for transmission of messages among computer users concerning information on topics of general interest to lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals
Class 41: Educational services, namely, organizing and conducting live and on-line parenting workshops, seminars, conferences, and summer camps for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals in the field of parenting, adoption, assisted reproductive technology, and fostering children; entertainment services, namely, organizing social entertainment events including playgroups for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals; providing a website featuring an online blog and non-downloadable publications in the nature of newsletters featuring news and commentary in the field of current events relating to lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals; Educational services, namely, training educators and school staff in the field of meeting the needs of lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals
Class 45: Providing emotional counseling and emotional support services for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals; Community outreach services provided to lesbian, gay, bisexual, transgender, and queer youth, namely, providing emotional counseling and emotional support services to lesbian, gay, bisexual, transgender, and queer youth
Amended Identification of Services for Maybe Baby: Some of the wording in the identification must be further specified to ensure it is properly classified and definite. Specifically, the wording “LGBTQ” in all classes is indefinite because it’s not clear what the abbreviation stands for. Further, the wording regarding “educational services” and “counseling and support services” is indefinite because the nature of the services is unclear. Finally, the wording “and/or” which is generally not accepted in a description of services.
Please let me know if you agree to the following suggested identification of goods, if accurate:
Class 41: Educational services, namely, organizing and conducting workshops for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals who are considering parenthood in the field of family planning
Class 45: Providing emotional counseling and emotional support services for lesbian, gay, bisexual, transgender, and queer families, prospective parents, and individuals who are considering parenthood
If you agree, I can make all changes for you via an Examiner’s Amendment. Please let me know by Friday, January 18, 2019. If you need additional time or if you would prefer a formal Office Action letter, please let me know and I can issue a Priority Action fully explaining the requirements.
Sincerely,
Vanessa Riley
Vanessa Riley
Examining Attorney
Law Office 127
(571) 272-7259
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.
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