NOTE TO THE FILE
SERIAL NUMBER: 88226582
DATE: 03/13/2019
NAME: aportaro
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X 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: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Wednesday, March 13, 2019 2:27 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Margaret Trevino <trevino@fr.com>; APS Incoming <APSI@fr.com>
Subject: 38767.0186002 and 38767.0186003 re IMPOSSIBLE CHEESESTEAK applications Trademark Applications (Serial Nos. 88226584 and 88226582)
Dear Ms. Portaro,
I write to confirm that your below noted amendments are acceptable. Will you kindly issue an Examiner’s Amendment in this regard?
Truly,
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: Lisa Greenwald-Swire
Sent: Tuesday, March 12, 2019 3:10 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Margaret Trevino <trevino@fr.com>; APS Incoming <APSI@fr.com>
Subject: 38767.0186002 and 38767.0186003 re IMPOSSIBLE CHEESESTEAK applications Trademark Applications (Serial Nos. 88226584 and 88226582)
Dear Ms. Portaro,
Thank you for your email, which is under review with my client. We hope to have an update for you soon.
Truly,
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: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Sent: Tuesday, March 12, 2019 1:39 PM
To: Lisa Greenwald-Swire <Greenwald-Swire@fr.com>
Subject: RE: 38767.0186002 and 38767.0186003 re IMPOSSIBLE CHEESESTEAK applications Trademark Applications (Serial Nos. 88226584 and 88226582)
Thank you for your response Ms. Greenwald-Swire. I will go ahead and issue the Examiner’s Amendment for Serial No. 88226582. There is one more issue with the application for Serial No. 88226584 that I just noticed when I was about to issue the Examiner’s Amendment. Specifically, the wording “substitutes for foods made from animals or animal products, namely, plant-based burger patties, plant-based snack foods” is indefinite and overly broad because the wording could be classified in multiple classes. For example, “Seed-based and vegetable based snack foods” are classified in International Class 29 and “grain-based snack foods” are classified in International Class 30. The suggested identification would read, with suggested changes in bold:
International Class 29: Substitutes for food, namely, plant-based meat substitutes, plant-based fish substitutes, and plant-based chicken substitutes; substitutes for foods made from animals or animal products, namely, meat substitutes in the nature of plant-based burger patties, plant-based snack foods in the nature of vegetable and seed based snack foods; meat substitutes; fish substitutes; plant-based fish substitutes comprised of grains and vegetables; plant-based snack foods, namely, seed-based snack foods and vegetable-based snack foods; and dairy substitutes, made primarily or derived from seeds, nuts, soy and/or other plants, namely, non-dairy butter, nondairy margarine, non-dairy raw cheese, non-dairy raw cottage cheese, non-dairy raw cream cheese, artificial or non-dairy cream, non-dairy yogurt, non-dairy milk, non-dairy half and half, non-dairy buttermilk, non-dairy and non-alcoholic eggnog, non-dairy sour cream, artificial whipping cream, artificial whipped cream, non-dairy based dips excluding salsa and other sauces, and non-dairy cheese powder
Please let me know if you would approve of my amending the identification as described and I will go ahead and issue the Examiner’s Amendment.
Thank you,
/Alexandra Portaro/
Trademark Examining Attorney
Law Office 126
(571)-270-3924
From: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Tuesday, March 12, 2019 3:59 PM
To: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>; tmdoctc <TMDocTC@fr.com>
Cc: Christine Chin <cchin@fr.com>; Margaret Trevino <trevino@fr.com>; APS Incoming <APSI@fr.com>
Subject: 38767.0186002 and 38767.0186003 re IMPOSSIBLE CHEESESTEAK applications Trademark Applications (Serial Nos. 88226584 and 88226582)
Dear Ms. Portaro,
Thank you very much for reaching out. We accept the disclaimer request, and approve of the language noted. Will you kindly issue an Examiner’s Amendment in this regard?
Truly,
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: Portaro, Alexandra <Alexandra.Portaro@USPTO.GOV>
Sent: Tuesday, March 12, 2019 11:54 AM
To: Lisa Greenwald-Swire <Greenwald-Swire@fr.com>; tmdoctc <TMDocTC@fr.com>
Cc: Trademark Group - SV <TrademarkGroup-SV@fr.com>
Subject: Trademark Applications (Serial Nos. 88226584 and 88226582)
Good afternoon Ms. Greenwald-Swire,
I am the trademark examining attorney reviewing the above referenced applications for your client, Impossible Foods, Inc. In review of this application, there is one issue with both applications that can be corrected without the need for an office action.
A disclaimer of the word “CHEESESTEAK” in the mark is required because it is descriptive of a feature or characteristic of applicant’s food substitute goods and restaurant services. The suggested disclaimer would read:
“No claim is made to the exclusive right to use “CHEESESTEAK” apart from the mark as shown.”
Please let me know if you would approve of my adding the disclaimer as described.
Please respond no later than 2 PM EST on Thursday, March 14, 2019.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
/Alexandra Portaro/
Trademark Examining Attorney
Law Office 126
United States Patent & Trademark Office
571-270-3924