NOTE TO THE FILE
SERIAL NUMBER: 88169896
DATE: 02/08/2019
NAME: hschubert
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: Michael Rizzo [mailto:mrizzo@sandsip.com]
Sent: Friday, February 08, 2019 10:05 AM
To: Schubert, Heather <Heather.Schubert@USPTO.GOV>
Cc: asilverstein@sandsip.com
Subject: Re: examiner's amendment inquiry - numerous applications for Vans, Inc. - response requested by EOB 2/8
Dear Ms. Schubert,
Thank you very much for your email - the efficiency of handling these related matters in one email is greatly appreciated. Please see my comments below in line with each matter in red font.
Should you have any questions please do not hesitate to contact me.
Kindly confirm safe receipt of this email.
Best regards,
-Mike
Michael Rizzo
mrizzo@sandsip.com
+1.617.714.1600Saunders & Silverstein LLP
sandsip.com
On Thu, Feb 7, 2019 at 2:41 PM Schubert, Heather <Heather.Schubert@uspto.gov> wrote:
Good morning Aaron, or another attorney of the same firm,
Following up on my voicemail from yesterday, I am the trademark examiner for a number of applications for Vans, Inc. There are a few very minor issues with some of the cases, detailed below, that need to be clarified before I can approve the applications for publication. Although there are six cases below, I’m hoping since the changes are so minor, I’ll be able to receive a confirmation response by the end of the day on Friday, 2/8 to be able to issue examiner’s amendments and move the cases forward. If not, I’ll have to issue Office actions to meet my docket deadlines, but you are welcome to respond to this email rather than file a formal response to expedite the applications.
88206495: The mark description is incomplete because it does not reference all the colored elements. I’d suggest the following amendment:The amendment is acceptable please process by Examiner's Amendment.
The mark consists of a rectangular label featuring the mark “VANS “OFF THE WALL”” in white on a black representation of a skateboard with white wheel detail and a white line under ““OFF THE WALL””, all on a white background. The dotted outline of the footwear is not claimed as part of the mark and is intended only to show the position of the mark.
88206499: The mark description is incomplete because it does not reference all the colored elements. I’d suggest the following amendment: The amendment is acceptable please process by Examiner's Amendment.
The mark consists of a rectangular label featuring the mark “VANS “OFF THE WALL”” in white on a red representation of a skateboard with white wheel detail and a white line under ““OFF THE WALL””, all on a white background. The dotted outline of the footwear is not claimed as part of the mark and is intended only to show the position of the mark.
88206504: The mark description is incomplete because it does not reference all the colored elements. I’d suggest the following amendment: The amendment is acceptable please process by Examiner's Amendment.
The mark consists of a rectangular label featuring the mark “VANS “OFF THE WALL”” in red on a white representation of a skateboard with red wheel detail and a red line under ““OFF THE WALL””, all on a red background. The dotted outline of the footwear is not claimed as part of the mark and is intended only to show the position of the mark.
88169886: Please issue an office action in connection with this application
(1) The identification of goods/services is indefinite because “caps” must make clear the goods are headwear. I’d suggest the following amendment:
Class 25: Clothing, namely, jackets, sweaters, shirts, and t-shirts; Headwear; Caps being headwear
Class 41: {no change}
(2) Disclaimer: The wording “PARK SERIES” describes a characteristic or purpose of applicant’s goods/services. Specifically, the competition services are a number of park terrain competitions (http://www.vansparkseries.com/about) and the clothing is for wearing in the park terrain competitions. As a result, applicant must provide a disclaimer statement. With applicant’s permission, I will add the following statement to the record:
No claim is made to the exclusive right to use “PARK SERIES” apart from the mark as shown.
88169896: The identification of goods/services is indefinite because “caps” must make clear the goods are headwear. I’d suggest the following amendment:The amendment is acceptable please process by Examiner's Amendment.
Class 25: Clothing, namely, jackets, sweaters, shirts, and t-shirts; Headwear; Caps being headwear
Class 41: {no change}
88169901: Please issue an office action in connection with this application.
(1) The identification of goods/services is indefinite because “hang bags” appears to be a typo for “hand bags”. Also, “laptop bags” is misclassified; “bags adapted for laptops” is in Class 9. I’d suggest amending to “hand bags” and transferring “bags adapted for laptops” to applicant’s companion application, 88239110, which has Class 9 (see TMEP 1402.08 regarding the ability to move goods/services between companion applications).
(2) Disclaimer: The wording “PRO” describes a characteristic or purpose of applicant’s goods/services, i.e. that applicant’s goods and services are for professional consumers or at the professional level. As a result, applicant must provide a disclaimer statement. With applicant’s permission, I will add the following statement to the record:
No claim is made to the exclusive right to use “PRO” apart from the mark as shown.
Please let me know if these changes are acceptable to the applicant, and I can make the changes via examiner’s amendments and approve for publication.
Thank you and best regards,
Heather
Heather Schubert
Trademark Examining Attorney
U.S. Patent & Trademark Office (USPTO)
Law Office 103
(Direct) 571-272-5484
Please be aware 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, 709.05, 709.06.