NOTE TO THE FILE
SERIAL NUMBER: 88223544
DATE: 09/10/2019
NAME: lrichards
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 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: email:
From: Thomas, Christopher M. <christhomas@parkerpoe.com>
Sent: Tuesday, September 10, 2019 9:45 AM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: Trademarks <trademarks@parkerpoe.com>; Hall, Michael E. <michaelhall@parkerpoe.com>; Bunn, Kimberly L <kimbunn@parkerpoe.com>
Subject: Fwd: Serial No. 88223544 (FORTNITE with cityscape)
Re: Two Applications Owned by Epic Games, Inc.
Mark:
Serial No.: 88223544 (parent)
Class: 25
Mark:
Serial No.: 88975780 (child)
Classes: 9, 41
Hi Leslie,
Yesterday the Office processed the request to divide, resulting in the new child application identified above. Would you please enter an Examiner’s Amendment to make of record the following description of the mark?
The mark consists of the wording “FORTNITE” in stylized font below a cityscape featuring stylized trees within a fence next to a design of forts, one fort with a flag on top, one fort with a satellite dish on top, and one fort with a chair and umbrella, and then another tree with a tire swing hanging from it.
And for everyone’s clarity, I understand you intend to (re-)approve the AAU for the child application, meaning that it will proceed to publication based on use and the parent application will proceed to publication based on intent to use.
Thanks,
Chris
From: Richards, Leslie <leslie.richards@USPTO.GOV>
Sent: Thursday, September 5, 2019 4:50 PM
To: Thomas, Christopher M. <christhomas@parkerpoe.com>
Cc: Trademarks <trademarks@parkerpoe.com>; Bunn, Kimberly L <kimbunn@parkerpoe.com>; Hall, Michael E. <michaelhall@parkerpoe.com>
Subject: RE: Serial No. 88223544
***Caution: External email***
Hi Chris,
The prior pending application has now been abandoned.
There is an issue within our Office regarding the timing of the processing the Request to Divide and Allegation of Use. I have been advised that the acceptance of the amendment to allege use will be withdrawn and then reprocessed. The AAU is acceptable so as soon as I am notified that it is re-entered, I will approve it. I believe that should happen quickly but understand that you may need to file a response since there is an deadline.
Very sorry for any inconvenience.
Best,
Leslie
Ms. Leslie Richards
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
571-272-1256 phone
E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to Office actions by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
Christopher Thomas
Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601
Office: 919.835.4641 | Fax: 919.834.4564 | vcard | map
Visit our website at
www.parkerpoe.com
From: Thomas, Christopher M. <christhomas@parkerpoe.com>
Sent: Wednesday, September 4, 2019 3:51 PM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: Trademarks <trademarks@parkerpoe.com>; Bunn, Kimberly L <kimbunn@parkerpoe.com>; Hall, Michael E. <michaelhall@parkerpoe.com>
Subject: FW: Serial No. 88223544
Re: U.S. Application for
Serial No.: 88223544
Applicant: Epic Games, Inc.
Deadline to Respond to Office Action: September 15, 2019
Hi Ms. Richards,
Further to our email exchange below, have you had a chance to check on prior-pending Serial No. 88067149, which is long overdue to go abandoned?
Please note my client’s deadline to respond is approaching, so we’ll have to file a response soon if we can’t get everything accomplished via an Examiner’s Amendment.
Thank you for your time.
Best,
Chris
From: Richards, Leslie <leslie.richards@USPTO.GOV>
Sent: Tuesday, August 6, 2019 12:22 PM
To: Thomas, Christopher M. <christhomas@parkerpoe.com>
Cc: Hall, Michael E. <michaelhall@parkerpoe.com>; Bunn, Kimberly L <kimbunn@parkerpoe.com>
Subject: RE: Serial No. 88223544
***Caution: External email***
Hi Chris,
Thank you for your email. To date, the AAU and Request to Divide have not yet been processed. Once they are, I will review them and enter the examiner’s amendment.
I will also check on that prior pending application for you. Please feel free to send a reminder or give me a call if you haven’t heard back by early next week.
Thanks,
Leslie
/Leslie L. Richards/
Trademark Examining Attorney
Law Office 106
571-272-1256
leslie.richards@uspto.gov (informal inquires only)
E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to Office actions by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
Christopher Thomas
Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601
Office: 919.835.4641 | Fax: 919.834.4564 | vcard | map
Visit our website at
www.parkerpoe.comFrom: Thomas, Christopher M. [mailto:christhomas@parkerpoe.com]
Sent: Friday, August 02, 2019 4:54 PM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: Hall, Michael E. <michaelhall@parkerpoe.com>; Bunn, Kimberly L <kimbunn@parkerpoe.com>
Subject: Serial No. 88223544
Re: U.S. Application for
Serial No.: 88223544
Applicant: Epic Games, Inc.
Deadline to Respond to Office Action: September 15, 2019
Hi Ms. Richards,
I represent the applicant for the above-identified application. There were only two issues in your Office Action of March 15, 2019. First, my client agrees to your proposed description of the mark, namely:
The mark consists of the wording “FORTNITE” in stylized font below a cityscape featuring stylized trees within a fence next to design of forts, one fort with a flag on top, one fort with a satellite dish on top, and one fort with a chair and umbrella and then another tree with a tire swing hanging from it.
The second issue was prior-pending Application No. 88067149, in which a response to office action was due by May 24, 2019. No response was submitted, but the Office hasn’t yet issued a notice of abandonment. Since that prior-pending application appears to have fallen through the cracks and I’m afraid it will hold up my client’s application indefinitely, would you mind asking the appropriate Office personnel to look at it and take action?
Lastly, today I filed an Amendment to Allege Use in my client’s application, so I kindly ask that you not approve this ITU application until the AAU has been entered and routed to you.
Thank you very much for your assistance, and please feel free to give me a call if you have any questions.
Best,
Chris
Christopher Thomas
Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601
Office: 919.835.4641 | Fax: 919.834.4564 | vcard | map
Visit our website at
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