NOTE TO THE FILE
SERIAL NUMBER: 88241555
DATE: 03/21/2019
NAME: jfickes
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
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:
Please send office actions. I need to get client approval for changes and it will take longer than you can wait.
Regards
Manny Valcarcel
Shareholder
Greenberg Traurig, P.A.
333 S.E. 2nd Avenue | Miami, FL 33131
T +1 305.579.0812 | F +1 305.961.5812
VALCARCELM@gtlaw.com | www.gtlaw.com | View GT Biography
From: Fickes, Jeri [mailto:Jeri.Fickes@uspto.gov]
Sent: Thursday, March 21, 2019 2:14 PM
To: IPMiami <ipmiami@gtlaw.com>
Subject: Re: Trademark Apps. SNs 88/241555 for CLARO-NOW, 88/241539 for CLARO-LDI, and 88/241530 for CLARO SIN FRONTERAS
Dear Mr. Valcarcel,
I am the examining attorney assigned to review the above applications. Before these applications can proceed in the registration process, the following issues must be addressed.
For SN 88/241555 for CLARO-NOW, the identification of services for IC 41 requires clarification. The following amendments, if accurate, are suggested:
Educational services, namely, providing training and classes, seminars, workshops and courses of instruction at the pre-school, elementary, secondary, undergraduate and graduate levels; educational services, namely,
educatingproviding classroom instruction at pre-schools, elementary school, secondary, technical, professional, undergraduate and graduate schools; providing courses of instruction at the pre-school, kindergarten, elementary, secondary, technical, professional, undergraduate and graduate levels; entertainment services, namely, providing temporary use of non-downloadable interactive computer games; rental of video cassettes and DVDs of television and radio programs;producingproduction of films and sound recordings;productionpresentation of live musical concerts; organizing, and conductingand operatinglive musical concerts, [specify nature of competitions, e.g., college sports, poker, soccer, etc.] competitions, [specify nature of games, e.g., basketball, soccer, etc.] games and cultural, arts and sports events; educational testing services;andprovision of courses of instruction in languagescourses; book publishing; written text editing and copy editing services for printed books, magazines and non-publicity texts; providing an Internet website portal in the field of entertainment, cultural and sporting events; in International Class 41.
For SNs 88/241539 for CLARO LDI and 88/241530 for CLARO SIN FRONTERAS both face potential Section 2(d) issues, issues with significance or translation, and the identification of goods for International Class 9 requires clarification. With regard to the last matter, the following amendments, if accurate, are suggested:
Telephone apparatus, telephone peripherals and accessories, namely, call processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, video conferencing cameras and video conferencing screens, cases for telephones
cases, battery chargers for use with telephoneschargers, mobile telephone batteries; in International Class 9.
With respect to the potential Section 2(d) issues, applicant should note the existence of a conflicting registered mark, RN 4374208, for CLARO for Battery chargers; batteries, electric, for vehicles; batteries, electric; battery cases (among other things). If applicant agrees to delete the language pertaining to batteries and chargers from the identifications for the two applications above (telephone chargers, mobile telephone batteries), this registration will not be cited against applicant’s marks under Section 2(d).
Application SN 88/241530 will be suspended pending disposition of prior-filed conflicting application SN 87/057802 for SIN FRONTERAS for Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Telecommunication services, namely, wireless telephone services; Telephone communication services regardless.
Lastly, applicant is asked to indicate whether the initials “LDI” in SN 88/241539 has any meaning or significance with respect to the goods and services (and if so, the term should be disclaimed apart from the mark as shown). Applicant must also provide a translation for the phrase “SIN FRONTERAS” as “without borders” in SN 88/241530.
Two of the applications can potentially be disposed of with examiner’s amendments, and the issues in the third application could be simplified by examiner’s amendment allowing the application to be suspended pending disposition of the prior-filed conflicting application.
I appreciate your help in resolving these issues.
Jeri Fickes
Trademark Examining Attorney
Law Office 107
USPTO
571/272-9157
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