NOTE TO THE FILE
Sent to TICRS as Serial Number: 88205307SERIAL NUMBER: 88205328
DATE: 03/02/2019
NAME: dzarick
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 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:X OTHER: e-mail correspondence
From: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Friday, March 01, 2019 6:13 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Cc: tmdoctc <TMDocTC@fr.com>; Jon Jekel <jekel@fr.com>; Katie Parkhurst <parkhurst@fr.com>; Margaret Trevino <trevino@fr.com>; APS Incoming <APSI@fr.com>
Subject: Proposed examiner’s amendment for docket no. 44825-0009002 (ZIONISM 3.0) and copending applications
Dear Ms. Zarick,
Thank you for your email. We approve of the proposed amendments to the identifications for its Class 38 and Class 41 services, including the removal of “trade fairs.” Our client does not wish to pursue a Class 35 registration at this time. Additionally, we approve of the proposed disclaimer of ZIONISM.
Please let me know if you have any questions.
Thanks again,
Lisa
Lisa Greenwald-Swire :: Principal :: Fish & Richardson P.C.
500 Arguello Street Suite 500, Redwood City, CA 94063
650 839 5198 direct :: lgs@fr.com
fr.com :: www.FishTMCopyrightBlog.com
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Thursday, February 28, 2019 1:47 PM
To: tmdoctc <TMDocTC@fr.com>
Cc: Trademark Group - SV <TrademarkGroup-SV@fr.com>; Katie Parkhurst <parkhurst@fr.com>
Subject: proposed examiner’s amendment for docket no. 448250009002 (ZIONISM 3.0) and copending applications
Dear Lisa Greenwald-Swire,
I am the trademark examining attorney to whom the below listed copending applications have been assigned. There are 2 minor issues that need to be resolved before these applications can move to publication. I would be happy to enter any changes for you by examiner’s amendment, based on your reply to this e-mail or a phone call.
Relevant applications applied for in Class 38:
- Serial no. 88205307; Z3 (standard characters)
- Serial no. 88205317; Z3 (stylized)
- Serial no. 88205322; Z3 ZIONISM 3.0
- Serial no. 88205316; ZIONISM 3.0
Relevant applications applied for in Class 41:
- Serial no. 88205311; Z3 (standard characters)
- Serial no. 88205328; Z3 (stylized)
- Serial no. 88205320; Z3 ZIONISM 3.0
- Serial no. 88205313; ZIONISM 3.0 – docket no. 448250009002
(1) Identification of services: The description of services requires some amendments. I have listed my proposed amended descriptions below, with all of my suggested changes in bold, items for applicant to clarify in bold italics, and suggested items to remove with a line through them.
Suggestions and explanations for the applications applied for in Class 38:
- “Computer communication” should be rewritten as “communication by computer terminals” to be definite. Similarly, “Internet access” should be preceded by the word “providing” to make clear that these are services. The wording after the comma should be clarified under the wording “…namely, streaming of video material on the Internet, in particular, recorded videos …”
- The wording “and training services” should be listed as “training” by itself, since this is referring to the subject matter of content that is to be streamed, and is not referring to training services.
- The subject matter of “Israel” should be clarified, because this wording appears to only reference a country. See the proposed suggestion below.
- The wording “related to” is indefinite, and should be replaced with the wording “in the fields of” to make the subject matter definite.
- Acronyms should be spelled out for clarity.
- In the identification of “access to content, website and portals, …” applicant should reword this as two separate items, one for content, and the other for websites and portals. These should each be worded as a telecommunications type of service, as suggested below.
- The duplicate “access to websites” after “namely” should be removed.
- The “content” should be worded under a telecommunications type of service such as: “Providing telecommunication access to video content provided via a video-on-demand service via the Internet, featuring content in the fields of …”
- The wording “and to associated educational programs, conferences, and cultural events” should be worded more clearly within the identification of services. It is suggested to list this separately under the following: “Providing telecommunication access to video content provided via a video-on-demand service via the Internet, featuring content from online galleries and electronic archives and their associated educational programs, conferences, and cultural events in the fields of Zionism, history and current events about Israel, United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood”
Class 38: Communication by computer
communicationterminals and providing Internet access, namely, streaming of video material on the Internet, in particular, recorded videos and live streaming of videos of lectures, workshops, panel discussions, concerts, cultural events, and exhibitions, and trainingservices related toin the fields of Zionism, history and current events about Israel,U.S.United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood; Providing access tocontent,websites and portals by way of a global computer network, namely,access to websites,online galleries,and electronic archivesrelated toin the fields of Zionism, history and current events about Israel,U.S.United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehoodand to associated educational programs, conferences, and cultural events; Providing telecommunication access to video content provided via a video-on-demand service via the Internet, featuring content in the fields of Zionism, history and current events about Israel, United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood; Providing telecommunication access to video content provided via a video-on-demand service via the Internet, featuring content from online galleries and electronic archives and their associated educational programs, conferences, and cultural events in the fields of Zionism, history and current events about Israel, United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood
Suggestions and explanations for the applications applied for in Class 41:
- The wording “educational programs” should be clarified by describing it in the singular form with the word “services.” The “s” is also underlined to highlight that it should be removed.
- The nature of how each of the services are carried out should be clarified by adding the additional wording below to indicate the type of services provided in relation to each item.
- The subject matter of “Israel” should be clarified, because this wording appears to only reference a country. See the proposed suggestion below.
- The wording “related to” is indefinite, and should be replaced with the wording “in the fields of” to make the subject matter definite.
- “Trade fairs” are misclassified in Class 41 because, while trade fairs may be educational, they are for business purposes, properly classified in Class 35. If adding a class, I will issue a combination examiner’s amendment/priority action for you to respond with the extra fee for the added class.
- Acronyms should be spelled out for clarity.
Class 35: Organization of trade fairs for business and promotional purposes in the fields of Israeli and Jewish artists, athletes, scholars, companies, organizations, and works of art
Class 41: Educational program
sservices, namely, developing, arranging, and conducting lectures, workshops, panel discussions, and conferences in the fields ofrelated toZionism, history and current events about Israel,U.S.United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood; Educational, cultural, and entertainment services, namely, organizing and arranging exhibitions for entertainment purposes, organizing and arranging cultural festivals for entertainment purposes, arranging and conducting concerts, arranging and conducting lectures, organizing and hosting cultural events for cultural purposes,trade fairs,organizing community sporting events, and arranging and conducting educational conferences, all of the foregoing showcasing Israeliorand Jewish artists, athletes, scholars, companies, organizations, and works of art; Training services, namely, conducting training and workshops for professionals planning educational programs and conferencesrelated toin the fields of Zionism, history and current events about Israel,U.S.United States-Israeli relations, current events in the Middle East, relations between Israelis and North American Jews, Jewish culture, and Jewish peoplehood
(2) Disclaimer Requirement for the following marks:
- Serial no. 88205322; Z3 ZIONISM 3.0
- Serial no. 88205316; ZIONISM 3.0
- Serial no. 88205320; Z3 ZIONISM 3.0
- Serial no. 88205313; ZIONISM 3.0
Applicant must provide a disclaimer of the unregistrable part of the applied-for marks even though the mark as a whole of each mark appears to be registrable. With a disclaimer of the unregistrable part of the mark, applicant can still register and use the applied-for mark as it appeared in the application. In this case, applicant needs to have a disclaimer statement for the wording “ZIONISM” because it describes a feature or subject matter of applicant’s services. A disclaimer will allow others to use that term as well to describe their services. I have listed my suggested disclaimer below in bold, which I can add to the record with your permission:
No claim is made to the exclusive right to use “ZIONISM” apart from the mark as shown.
Please let me know how you want to proceed or if you have any questions by next Tuesday, 3/5, at 3pm EST. Thank you.
/Diana Zarick/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 126
(571) 270-5013
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