NOTE TO THE FILE
Sent to TICRS as Serial Number: 88240848SERIAL NUMBER: 88240855
DATE: 03/19/2019
NAME: msantomartino
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:X OTHER: email authorization for examiner's amendment:
From: Berthold Legal [mailto:ip@bertholdtypes.com]
Sent: Tuesday, March 19, 2019 5:22 PM
To: Santomartino, Martha <Martha.Santomartino@uspto.gov>
Subject: Re: U.S. Trademark Applications for Berthold Types Limited
Dear Ms. Santomartino,
Yes, I misunderstood the application with respect to §2(f). Please withdraw the 2(f) claims. I appreciate your assistance.
Thank you,
_______________________________
Melissa M. HuntVice President & General Counsel
Berthold Types Limited
Email ip@bertholdtypes.comhttp://www.bertholdwebfonts.com
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On Tue, Mar 19, 2019 at 3:06 PM Santomartino, Martha <Martha.Santomartino@uspto.gov> wrote:
Dear Ms. Hunt,
I am the trademark examining attorney handling the following applications:
CHASSEUR – 88240848
DONATUS – 88240852
SENECA – 88240855
VERGIL – 88240860
BERTHOLD – 88240875
CONCORDE NOVA – 88240879
QUADRIGA – 88240884
DAILY NEWS – 88241940
MICHELANGELO – 88241972
I’ve searched the USPTO’s database of registered and pending marks and have found no conflicting marks that would bar registration under Trademark Act Section 2(d) for any of these applications.
However, there is one issue requiring attention from you:
While applicant has claimed acquired distinctiveness under Trademark Act Section 2(f) for these marks, they appear, however, to be inherently distinctive and eligible for registration on the Principal Register without proof of acquired distinctiveness. See 15 U.S.C. §1052(f); TMEP §1212.02(d). In that these Section 2(f) claims appear to be unnecessary, you have the option to withdraw them. See TMEP §1212.02(d).
If you approve, I can withdraw the Section 2(f) claims by way of examiner’s amendment. The applications will then be in condition for approval for publication. It is noted that if you do not withdraw the claims, they will remain in each application record and be printed on the registration certificates. See TMEP §1212.10.
Please let me know how you would like to proceed.
Best regards,
Martha Santomartino
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 112
(direct) (571) 272-9416
Martha.Santomartino@USPTO.gov