Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88159793

DATE:                                02/27/2019

NAME:                               mdebus

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

From: Debus, Meridith
Sent: Wednesday, February 27, 2019 9:53 AM
To: 'Stephen Barrese' <sbarrese@dilworthbarrese.com>
Subject: RE: U.S. Trademark Application Nos. 88159765 (WHITE LIGHTNING 1957) and 88159793 (WHITE LIGHTNING 1957 and stylized design): Follow-up to Responses to Office Actions and Request for Examiner's Amendments before Friday, March 8, 2019

 

Thank you Mr. Barrese for the quick reply. I’ll take care of the response this morning.

 

Sincerely,

 

Meridith

 

From: Stephen Barrese [mailto:sbarrese@dilworthbarrese.com]
Sent: Wednesday, February 27, 2019 9:41 AM
To: Debus, Meridith <Meridith.Debus@USPTO.GOV>
Cc: Robin Duran <rduran@dilworthbarrese.com>
Subject: RE: U.S. Trademark Application Nos. 88159765 (WHITE LIGHTNING 1957) and 88159793 (WHITE LIGHTNING 1957 and stylized design): Follow-up to Responses to Office Actions and Request for Examiner's Amendments before Friday, March 8, 2019

 

Dear Ms. Debus,

 

My client agrees to your amendments.

 

Please issue EA.

 

Regards,

 

Stephen R. Barrese, Esq.
Dilworth & Barrese, LLP.
1000 Woodbury Road, Suite 405
Woodbury, NY 11797
Direct Dial -516-224-1624
Fax-516-228-8516
sbarrese@dilworthbarrese.com

 

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From: Debus, Meridith <Meridith.Debus@USPTO.GOV>
Sent: Wednesday, February 27, 2019 9:39 AM
To: Stephen Barrese <sbarrese@dilworthbarrese.com>
Subject: U.S. Trademark Application Nos. 88159765 (WHITE LIGHTNING 1957) and 88159793 (WHITE LIGHTNING 1957 and stylized design): Follow-up to Responses to Office Actions and Request for Examiner's Amendments before Friday, March 8, 2019

 

Good morning Mr. Barrese,

 

Thank you for the quick responses to the Office actions for U.S. Application Serial Nos. 88159765 (WHITE LIGHTNING 1957) and 88159793 (WHITE LIGHTNING 1957 and stylized design). I have had an opportunity to review both responses. Almost all issues are resolved. There are just a couple of minor issues with the identification of goods in each application, and these issues are of the type that may be resolved by Examiner’s amendment with your authorization.

 

In particular, the identification as amended identifies “clothing, namely, … caps”. There are certain specialized caps that are considered clothing but are classified outside of International Class 25 (for example, surgical caps worn by doctors are classified in International Class 10). The Office would accept “caps being headwear” as an amendment that would make the article of clothing sufficiently definite within International Class 25. In addition, I would suggest amending the spelling of “teeshirts” to “tee shirts”.

 

The following is suggested, which may be entered by Examiner’s amendment for each application with your authorization. Additions are bolded and underlined, and deletions are italicized, bolded, and struck through:

 

“clothing, namely, shirts, tee shirts teeshirts, golf shirts, sweatshirts, hoodies, hats, caps being headwear” in International Class 25

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06.

 

Please respond to this email or call me at (571) 270-3464, the number listed below, to confirm the potential Examiner’s Amendment for each application before 5:00 p.m. E.S.T. on Friday, March 8, 2019. I also can issue Final Priority actions if your client needs more time to consider the issue. If you are unable to respond, Final Office actions will issue. Thank you in advance for your continued assistance in this matter.

 

Sincerely,

 

Meridith

 

Meridith Debus

Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

(571) 270-3464

 

***All relevant e-mail and phone communications regarding an application are made of record as a Note to the File. TMEP §709.05.