Notation to File

NOTE TO THE FILE

---

SERIAL NUMBER:            88218574

DATE:                                10/02/2020

NAME:                               rcohen

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

     Requested Law Library search           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:

     OTHER:

-----------------------------------------------------------------------------

From: Cohen, Robert
Sent: Friday, October 2, 2020 11:47 AM
To: 'Nash, William'
Cc: Dobbs, Ashley
Subject: RE: Trademark Matter - MAYA

Mr. Nash,

Thank you for your email.  Please reference TMEP 1110.08 concerning proper Office action responses.  A request to divide is not considered a response to an Office action irrespective of whether the application is in a pre-publication phase or on SOU.  Therefore, the refusal in the Office action that issued off of the SOU must be addressed, even if the application was divided.  Also please note that once an SOU is filed, it cannot be withdrawn. 

Hope this is of some assistance to you.

Best,

-Robert

Robert A. Cohen
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 103
P:  (571) 270-1389
E:  robert.cohen@uspto.gov

 

From: Nash, William <william.nash@richmond.edu> 
Sent: Thursday, October 1, 2020 1:41 PM
To: Cohen, Robert <Robert.Cohen@USPTO.GOV>
Cc: Dobbs, Ashley <ashley.dobbs@richmond.edu>
Subject: Trademark Matter - MAYA

Good afternoon Mr. Cohen,

I hope this email finds you well. My name is William Nash and I am a student attorney for the University of Richmond School of Law Intellectual Property Clinic. I am writing to you today in regards to the Maya issue.

There were originally two applications for Maya, the word mark (88/218584) and the word and design mark (88/218574) but have since been divided today into two child applications between the two difference International Classes of the application (now 88/979156 for the word mark and 88/979157 for the word and design mark).

We were under the impression that we would be able to file an extension of time SOU once the application was divided, but Ms. Concetta Butler (the ITU Paralegal in charge of dividing the application) informed us today that the SOU we had submitted for the entire application before it was divided would attach to the child applications and we would need to file a substitute specimen.

The child applications are based on a mobile application that has not been launched yet, so it would be impossible to file an SOU. If we can not file an extension of time, we would like to be able to discuss our options moving forward with the child applications to keep that class alive.

Please let me know if you are free to discuss with us today or tomorrow, on account of our deadline is tomorrow night.

Thank you in advance for your help in this matter.

Best regards,

--
William B. Nash
J.D. Candidate, Class of 2021
University of Richmond School of Law
North Carolina State University, Class of 2018
(434) 960-2211

 

         Sent to TICRS as Serial Number: 88218584