NOTE TO THE FILE
Sent to TICRS as Serial Number: 88249637SERIAL NUMBER: 88249637
DATE: 04/10/2019
NAME: rmcdorman
NOTE:
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: McDorman, Roger
Sent: Wednesday, April 10, 2019 1:31 PM
To: Francesco Braga <fbraga@perani.com>
Subject: RE: US Trademark Application Ser. No. 88249637; PADERNO mark
Francesco,
Because you are narrowing the ID by specifying the goods are for professional use, and because both here and in the response, you sufficiently address the ID issues raised in the office action, I think the amendments you propose will be acceptable.
I’ll enter them via examiner’s amendment, then approve the mark for publication. Also, the response filed for the companion application, 88249603, appears to have put it in condition for publication as well.
Please let me know if you have any more questions. Also, my phone seemed to think your calls were spam (or of otherwise dubious origin); but now that I know it’s you, if you call back, I’ll try to pick up.
Best,
Roger
Roger T. McDorman
Examining Attorney
Law Office 109
571-272-5224
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Francesco Braga [mailto:fbraga@perani.com]
Sent: Wednesday, April 10, 2019 12:42 PM
To: McDorman, Roger <Roger.Mcdorman@USPTO.GOV>
Cc: mei7 <mei7@perani.com>
Subject: US Trademark Application Ser. No. 88249637; PADERNO mark
Dera Roger,
I have tried to reach you over the phone without success.
In connection with the US Trademark Application in re, I have recently filed a response to Office Action but now the client would like to slightly amend the list of goods, namely the following:
Class 008
Kitchen tools and accessories, namely, non-electric food slicers, hand-operated bread, cheese, meat, fruit, vegetable, biscuit and pizza slicers; cleavers; flatware, namely, spoons for tea and coffee, knives, forks and spoons; salad forks; hand tools, namely, lobster and crab shell crackers; kitchen mallet for lobster and crabs; household knives; knives for cutting biscuits; bread knives; butcher knives; chef knives; meat knives; butter knives; ceramic knives; cheese knives; fruit knives; meat tenderizers, namely, a kitchen mallet; non-electric can openers; table flatware, namely, spoons for coffee and tea, knives, forks and spoons, composed of silver, silver-plated, or stainless steel; non-electric pizza cutters; cake cutters; boxes specially adapted for the storage of cutlery and flatware; non-electric meat and garlic choppers; non-electric fruit peelers; non-electric potato peelers; non-electric vegetable peelers; oyster openers; scissors for kitchen use; all the foregoing sold for professional use in trade channels serving the hotel, restaurant, and catering industries (HO.RE.CA), and none of the foregoing sold in the retail channel.
Articles made of glass, porcelain and majolica, namely, bottles sold empty, cups, plates, pots, cookie jars, vases for flowers; glassware, namely, drinking glasses, wine glasses, beer glasses; glass jars; kitchen tools and accessories, namely, bottle openers, jar openers, ice cream scoops, tongs, sugar tongs, ice tongs, bread and pastry tongs, whisks, food basters, butter coolers; knife blocks; bar serving items, namely, ice buckets, cocktail shakers, cocktail strainers, cork screws; forks and spoons for serving and mixing; pasta serving forks and spoons; kitchen ladles; serving platters; serving trays; cooking utensils, namely, cooking pots, frying pans, roasting pans, steam cookers, saucepans for steam cooking, kettles, all these goods being non-electrical; casserole pots; oval casseroles; round oven casseroles; containers for household and kitchen use; cooking skewers; colanders; cooking strainers for pasta; grills in the nature of cooking utensils; steamer baskets; cookware for use in microwave ovens; Dutch ovens; stew pots for use in ovens; metal containers for baking purposes, namely, cake pans, pizza pans; cake molds; rolling pins; pizza peels; sieves; roasting dishes; roasting dishes made of terra cotta; cooking dishes for microwave ovens; fish and meat dishes and relevant covers; vegetable dishes; butter-dish and cheese-dish covers; deep saucepots; deep stew-pans; omelet pans; egg cups; egg poachers; egg separators non electric, for household purposes; empty spray bottles; anti-splatter devices, namely, splatter screens; cutting boards; wooden cutting boards; plastic cutting boards; fruit baskets sold empty; funnels; gravy boats; skillets; hand-operated spice grinders; manual graters for spices, cheese, fruits and vegetables; household utensils, namely, mixing spoons, spatulas and pot and pan scrapers; ice bowls; ice cream stands in the nature of kitchen utensils; insulated beverage servers being containers; lemon squeezers; non-electric milk boilers; non-electric tea boilers; coffee maker non-electric; non-electric food mixers; non-electric domestic utensils, namely, citrus-fruit squeezers, juice extractors; non-electric fruit squeezers; non-electric pressure cookers; non-electric woks; non-electric deep fryers; non-electric non-stick pressure cookers; non-electric vegetable steamers; waffle irons; non-stick casserole dishes; non-stick containers for storing and cooking food; non-stick cooking pans; non-stick cooking pots; non-stick frying pans; non-stick stew pans; vegetable mashers; oil and vinegar cruet sets sold empty; hand-operated pepper mills; salt and pepper shakers; toothpicks; salad spinners; small utensils and portable containers, for household and kitchen use, namely, soup bowls, sauce bowls, small cups, mugs, sugar containers, carafes, jugs; toothpick holders, lids for pots, spoon rests; napkin holders; napkin rings; chopstick stands; plates, trays for domestic purposes; dinnerware, namely, plates, cups and saucers; coffee and tea services in the nature of tableware; tea filters, namely, infusers; non-electric teapots; tea strainers; stirring rods for beverages; vacuum bottles; chopsticks; creamer pitchers; water serving pitchers; basins in the nature of bowls; pastry and basting brushes; spare glass inserts for serving trays; camping grills; portable pots and pans for camping; portable cooking kits for outdoor use; utensils for barbecues, namely, forks, tongs, turners; instruments and materials for cleaning, namely, steel wool; cleaning brushes for household use; cleaning implements and materials, namely, cleaning cloths; floor brushes; sponges for household purposes; buckets; washing brushes; oven mitts; all the foregoing sold for professional use in trade channels serving the hotel, restaurant, and catering industries (HO.RE.CA), and none of the foregoing sold in the retail channel.
As you will see, the applicant wants to better clarify and limit the identification by amending the wording “all the foregoing sold in trade channels serving the hotel, restaurant, and catering industries (HO.RE.CA)” in “all the foregoing sold for professional use in trade channels serving the hotel, restaurant, and catering industries (HO.RE.CA), and none of the foregoing sold in the retail channel”.
Please confirm that I can proceed accordingly.
Since the application is not published yet, I would appreciate if you can give me a feedback as soon as possible.
My best regards,
Francesco