NOTE TO THE FILE
SERIAL NUMBER: 88165666
DATE: 03/10/2019
NAME: snasserghodsi
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
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:From: Goldman, Beth M. [mailto:Beth.Goldman@orrick.com]
Sent: Thursday, March 07, 2019 7:30 PM
To: Nasserghodsi, Sahar <Sahar.Nasserghodsi@USPTO.GOV>; SF trademark group <ipprosecutionsf@orrick.com>
Cc: Lee, Betsy Wang <bwang@orrick.com>; Aghnami, Eileen Z. <eaghnami@orrick.com>; Parker, Andrew R. <aparker@orrick.com>; Civil, Christopher <ccivil@orrick.com>
Subject: RE: United States Trademark Application Serial Nos. 88165668 TROMBETTA; 88165666 PINNACLE
Dear Sahar,
Thank you for your email. You are authorized to amend the descriptions in both marks to “edible olive oil” and issue examiners’ amendments accordingly.
Kind regards,
Beth
Partner
T +1-415-773-4580
beth.goldman@orrick.com
From: Nasserghodsi, Sahar [mailto:Sahar.Nasserghodsi@USPTO.GOV]
Sent: Thursday, March 7, 2019 9:45 AM
To: Goldman, Beth M. <Beth.Goldman@orrick.com>; SF trademark group <ipprosecutionsf@orrick.com>
Cc: Lee, Betsy Wang <bwang@orrick.com>; Aghnami, Eileen Z. <eaghnami@orrick.com>; Parker, Andrew R. <aparker@orrick.com>
Subject: United States Trademark Application Serial Nos. 88165668 TROMBETTA; 88165666 PINNACLE
Dear Ms. Goldman,
I hope this email finds you well. I just received notification that the above two referenced applications have been bounced on publication review due to indefinite identification of goods in International Class 029. Specifically, the wording “olive oil” are indefinite and may be misclassified. Under Nice 11-2017, effective 1-1-2017, identifications for “oils” must indicate that the goods are “edible,” “for food” or “for culinary purposes” for classification in Class 29. If the changes below are acceptable, I will issue an examiner's amendment accordingly for both files:
International Class 029: Edible oil; cooking oil; salad oil; edible olive oil
I apologize for the inconvenience. Please let me know by phone or email, by Wednesday 3/13, if you agree to allow me to correct the above by an examiner's amendment or if you have any questions about the application. Please note that I will be out of the office this afternoon from 3:45pm EST and will return on Monday 3/11.
Best,
Sahar
Sahar Nasserghodsi
Examining Attorney, Law Office 115, USPTO
(571)272-9192
Trademarks Office -- USPTO