NOTE TO THE FILE
SERIAL NUMBER: 88141435
DATE: 12/18/2018
NAME: gcuello
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:
X 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:Ms. Cuello, please see my responses below. Thanks, John
From: Cuello, Gidette [mailto:Gidette.Cuello@USPTO.GOV]
Sent: Thursday, December 13, 2018 10:03 AM
To: John L. Graham <john.graham@hobbylobby.com>
Subject: [EXTERNAL] RESPONSE REQUESTED: Trademark applications 88093591 (ENTRUST COIN SUPPLIES), 88100842 (DERBY CAR SUPPLY) and Others
Hello Mr. Graham,
Thank you for reaching out regarding your pending applications. Below are the marks that require disclaimers, a mark where a partial section 2d will issue, and the marks that have been published from my end.
Disclaimer issues
· 88093591 ENTRUST COIN SUPPLIES – a disclaimer of “COIN SUPPLIES” is needed, as the applicant’s goods may be deemed “SUPPLIES” pertaining to coins / coin collection. The goods include coin holders, coin albums, and protective sheets
of paper and pages of books.[John Graham] Agreed. Please issue an examiner’s amendment.
· 88100842 DERBY CAR SUPPLY BY ROADWAY RACERS – you have disclaimed “CAR SUPPLY”, however the wording “DERBY” must also be disclaimed as the supplies may be related specifically to “DERBY CARS”.[John Graham] Agreed. Please issue examiner’s amendment.
· 88128752 THE PAPER STUDIO AGENDA 52 – The wording “PAPER” and “AGENDA” must be disclaimed for International Class 16; The wording “STUDIO” must be disclaimed for Class 18, as “tote bags” may originate from a design “STUDIO”.[John Graham] I would like to evaluate further. Please issue an office action.
· 88114359 THE PAPER STUDIO ELLE OH ELLE – Applicant must disclaim “PAPER” in International Class 16 because applicant offers paper. The wording “STUDIO” must be disclaimed for Class 18, as “tote bags” may originate from a design
“STUDIO”.[John Graham] I would like to evaluate further. Please issue an office action.
· 88130914 THE PAPER STUDIO MEASURE & MIX – The wording “PAPER” must be disclaimed for International Class 16 because applicant may offer printed recipe cards made of paper.[John Graham] Agreed. Please issue an examiner’s amendment.
Section 2(d) refusal
A Partial Section 2(d) refusal will issue for 88141435 TREE HOUSE STUDIO in International Class 20 for “Decorative mirrors”. There is a registered mark for “TREE HOUSE LANE” that is for “furniture.” The marks share the dominant wording “TREE HOUSE” and the goods are related. For example, West Elm offers mirrors and furniture: http://www.westelm.com/shop/wall-decor-mirrors/wall-mirrors/ and http://www.westelm.com/shop/furniture/?cm_type=gnav. I will limit the refusal only to “decorative mirrors”. The registered mark is the only other registered mark in International Class 20.
A disclaimer of “STUDIO” will be required.[John Graham] Agreed as to the disclaimer of “STUDIO”; I would like to evaluate the 2(d) refusal further. Please issue an office action.
The following marks have been approved for publication:
· 88110463 ELIZA & JANE
· 88110399 BLESSINGS OF CHRISTMAS BY ROBERT STANLEY
· 88100728 THE PAPER STUDIOS PETALS + BLOOM
Please let me know if you would like me to enter the disclaimers via an examiner’s amendment on my end. I am also free to discuss all the requirements/refusals at your convenience.
Thank you,
Gidette Cuello
Trademark Examining Attorney
United States Patent and Trademark Office
(571) 272-1122