NOTE TO THE FILE
Sent to TICRS as Serial Number: 88241882SERIAL NUMBER: 88241884
DATE: 03/22/2019
NAME: rcoughlan
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:From: Daniel E. Kattman [mailto:dkattman@reinhartlaw.com]
Sent: Friday, March 22, 2019 11:39 AM
To: Coughlan, Rebecca <Rebecca.Coughlan@USPTO.GOV>; Trademark Administration <tmadmin@reinhartlaw.com>
Subject: RE: USPTO Trademark Application Nos: 88241882 EARTH IDEAL, 88241877 EARTH TIGHT, and 88241884 ASSURED DISPOSAL
Rebecca,
Thank you for your email.
I agree to the disclaimer of the word EARTH and your proposed amendments to the description of services.
Please let me know what prior application will be cited against ASSURED DISPOSAL.
Thanks,
Dan
Daniel E. Kattman
Shareholder
Reinhart Boerner Van Deuren, s.c.
1000 N. Water Street, 17th Floor
Milwaukee, WI 53202-3186414-298-8185 Direct
414-298-8097 Facsimile
http://www.reinhartlaw.com | Bio | vCard
From: Coughlan, Rebecca [mailto:Rebecca.Coughlan@USPTO.GOV]
Sent: Friday, March 22, 2019 10:23 AM
To: Trademark Administration <tmadmin@reinhartlaw.com>
Subject: USPTO Trademark Application Nos: 88241882 EARTH IDEAL, 88241877 EARTH TIGHT, and 88241884 ASSURED DISPOSAL
Good Morning Daniel Kattman,
I am reviewing the above referenced trademark applications for your client, C.W. Purpero, Inc. In review of these applications, there are a few issues that can be corrected without the need for an Office Action.
1. Disclaimer Statement:
First, we require a disclaimer of the word EARTH in application numbers 88241877 and 88241882 because it is descriptive of the applicant’s services. The disclaimer statements would read:
No claim is made to the exclusive right to use the word “EARTH” apart from the mark as shown.
Please let me know if you approve of my adding the disclaimer statements as described.
2. Identification of Services:
Second, we need an amendment to the identification of services in all three applications because it is indefinite and overly broad and therefore must be amended for clarity and to ensure proper classification. The suggested amended identification would read, with changes in bold:
IC 042: Software as a service (SAAS) services featuring mobile device software applications and web-based software applications to track and publish construction site code and regulation compliance and environmental regulation compliance; software as a service (SAAS) services featuring software to generate and publish reports and assessments in the field of construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; providing a web-based system and on-line portal to automate construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; Software as a service (SAAS) services featuring mobile device software applications and web-based software application to track the location, quantity and availability of unused or excess construction materials, building raw materials, construction equipment and construction site resources, improve efficiency, resource utilization and reduce waste and reduce emissions on construction sites and construction projects and enable communication and improve productivity among contractors and construction project team members; maintaining on-line database systems for others that track the location, quantity and availability of unused or excess construction materials, building raw materials, construction equipment and construction site resource
Please let me know if you approve of my amending the identification of services as described for each application.
3. Prior Pending Application:
Lastly, there is a prior pending application that could potentially raise a Likelihood of Confusion issue with respect to application number 88241884 if it registers. Therefore, once the identification of services has been amended, this application will be suspended until the prior pending application either registers or abandons.
In summary, we need to following approvals from you.
1. Amendment of the identification of services for all three applications as described.
2. Adding the disclaimer statements for application nos. 88241882 and 88241877 as described.
Please respond no later than 12 PM EST on Tuesday, March 26, 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. As always, the application is subject to final review by a supervisory attorney before publication. Thank you.
Sincerely,
/Rebecca D. Coughlan/
Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-4975 voice | rebecca.coughlan@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-.05.