NOTE TO THE FILE
SERIAL NUMBER: 88139105
DATE: 01/10/2020
NAME: jfickes
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 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:X OTHER:
Dear Attorney Fickes,
Thank you for your email, please issue a formal office action so that we can make a Section 2(f) claim of acquired distinctiveness.
Best Regards,
Jessica
JESSICA TAM
for COBALT LLP
1912 Bonita Avenue
Berkeley, CA 94704
p. 510.841.9800
f. 510.295.2401
e. jessica@cobaltlaw.com
Docket (internal use only)
Client:
Mark:
Action:
Date:
On Thu, Jan 9, 2020 at 6:32 AM Fickes, Jeri <Jeri.Fickes@uspto.gov> wrote:
Dear Mr. Manfredi,
I have received the response to the previous Office action and the substitute specimen is accepted. The substitute specimen shows a “substantially exact” depiction of the mark as shown in the drawing.
The requirement for correction of the disclaimer to disclaim only “TACO,” which applicant complied with, however, was incorrect. My apologies for this error. The language “DINELA” (in its correct form as “DINE LA”) does need to be disclaimed or a Section 2(f) claim of acquired distinctiveness as to “DINELA” needs to be asserted (as in the prior application Serial No. SN 87/680150, for the mark DINELA). The first I can do by examiner’s amendment, the second will require issuance of a formal Office action. Please let me know which course of action applicant prefers.
Again, my apologies for the misdirection.
Jeri Fickes
Trademark Examining Attorney
Law Office 107
USPTO
571/272-9157