NOTE TO THE FILE
SERIAL NUMBER: 88254109
DATE: 05/01/2019
NAME: xademi
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 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: Ademi, Xheneta
Sent: Wednesday, May 01, 2019 12:48 PM
To: Allison S. Ricketts <aricketts@fzlz.com>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>
Subject: RE: SN 88254109 for THE WE COMPANY (Our Ref: 1900519); SN 88975222 Child Application for THE WE COMPANY (Our Ref: 1905848)
Dear Attorney Strickland Ricketts:
Please note that for the parent application, the divisional unit forgot to delete the clause “industrial design services” in Class 042, which was supposed to be moved to the child application. I will have this fixed.
You are correct; based on our earlier discussions, the prior pending application advisory now applies only to the child application, and not to the goods/services that remain in the parent application. I will copy and paste our e-mail conversations into a note to file, both in the child and parent applications, so that they are in the record. Because no new issue has been raised by the divisional request, I do not have authority to issue a supplemental Office action. See TMEP § 714.05.
Procedurally, as stated in TMEP § 1110.08, filing a request to divide does not relieve an applicant of the duty to respond to an outstanding Office action. Here, the outstanding Office action included other outstanding issues, namely, the identification and disclaimer issues, to which Applicant must respond and address. Once the response is filed, I will review it and let you know if anything else is needed.
Best regards,
Xheneta
Xheneta Ademi
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7151
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: Allison S. Ricketts [mailto:aricketts@fzlz.com]
Sent: Wednesday, May 01, 2019 11:00 AM
To: Ademi, Xheneta <Xheneta.Ademi@USPTO.GOV>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>; Michelle Klein <mklein@fzlz.com>
Subject: RE: SN 88254109 for THE WE COMPANY (Our Ref: 1900519); SN 88975222 Child Application for THE WE COMPANY (Our Ref: 1905848)
Dear Ms. Ademi and Mr. Lincoski:
The divisional request has been completed. The child application in Cl. 37 and 42 is 88975222.
Consistent with our earlier discussions, my understanding is that the prior pending application advisory now applies only to the child application, and not to the goods/services that remain in the parent application. Is there any way for this to be reflected in the record of the original (parent) application 88254109, such as in a supplemental Office action?
The TMEP § 1110.08 says the following, which does not seem to apply here and is not the way that this divisional was processed:
If the applicant files a request to divide goods/services that are subject to a refusal from goods/services that are not subject to a refusal, the USPTO puts the goods/services that are not subject to refusal in the new (child) application, and retains the goods/services that are subject to refusal in the original (parent) application. More child applications may later be created from the parent application.
This is an unusual situation so I’m not sure what the procedure should be. Thank you for your ongoing assistance.
Regards,
Allison
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
From: Allison S. Ricketts
Sent: Tuesday, April 16, 2019 5:38 PM
To: 'Ademi, Xheneta' <Xheneta.Ademi@USPTO.GOV>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>; Michelle Klein <mklein@fzlz.com>
Subject: RE: SN 88254109 for THE WE COMPANY (Our Ref: 1900519)
Dear Ms. Ademi and Mr. Lincoski:
To keep you up to date on this application, we have filed a request to divide these services into a child application (see attached). I know these are processed by a different group within the USPTO but am hopeful this will be processed soon.
Regards,
Allison
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
From: Allison S. Ricketts
Sent: Wednesday, April 10, 2019 4:46 PM
To: 'Ademi, Xheneta' <Xheneta.Ademi@USPTO.GOV>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>
Subject: RE: SN 88254109 for THE WE COMPANY (Our Ref: 1900519)
Dear Ms. Ademi:
Thank you very much. I will need time to obtain instructions on the proposed amendments, so I will move those services into the child application as well so that we can deal with them separately.
The applicant will be appreciative of your assistance.
Regards,
Allison
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
From: Ademi, Xheneta [mailto:Xheneta.Ademi@USPTO.GOV]
Sent: Wednesday, April 10, 2019 4:05 PM
To: Allison S. Ricketts <aricketts@fzlz.com>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>
Subject: RE: SN 88254109 for THE WE COMPANY (Our Ref: 1900519)
This email is intended for Allison Strickland Ricketts and/or any authorized party
United States Trademark Application Serial No. 88254109 / THE WE COMPANY
Dear Attorney Strickland Ricketts:
I have reviewed your email and here are my thoughts:
- I agree that the services you listed are in conflict:
42: scientific and technological research services; industrial analysis and research services; industrial design services
- Additionally, I am worried about the Class 37 services listed below, as they could pertain to oil and gas industry equipment or other related industrial uses, but I would be fine with them remaining in the application if they are amended to indicate that the services pertain to commercial real estate and not to industrial uses:
37: installation services; installation services, namely, installation of lighting apparatus, security systems, doors, HVAC (Heating, ventilation and air conditioning), flooring, wiring, machinery, audiovisual equipment, fixtures and fittings for buildings, and computer hardware and telecommunication apparatus; construction consultancy and supervision; construction project management services;
I hope this helps. Let me know if you have further questions.
Best regards,
Xheneta
Xheneta Ademi
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7151
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: Allison S. Ricketts [mailto:aricketts@fzlz.com]
Sent: Monday, April 08, 2019 4:16 PM
To: Ademi, Xheneta <Xheneta.Ademi@USPTO.GOV>
Cc: Lincoski, John <John.Lincoski@USPTO.GOV>; Michelle Klein <mklein@fzlz.com>
Subject: SN 88254109 for THE WE COMPANY (Our Ref: 1900519)
Dear Ms. Ademi:
Thank you for your time to discuss the above application for THE WE COMPANY with me last week. I also had the opportunity to speak with Mr. Lincoski and he asked that I copy him on this email.
The Office action included a prior pending application advisory of SN 88001872 for W.E. COMPANIES (stylized) which covers “oil and gas equipment rental services, oil and gas equipment fabrication services, and oil and gas equipment inspection services, including magnetic particle, liquid penetrant, and ultrasonic wall thickness testing of tubulars and related equipment such as valves, liner hanger assemblies, and flanges; oil and gas equipment load testing and inspection services; oil and gas equipment load certification services, namely, evaluation of the equipment load capacity to determine conformity with certification standards; and oil and gas equipment design services.”
Applicant would like to divide its application to move any goods/services that are considered potentially to be in conflict with the prior pending application into a separate child application, so they can be dealt with separately. Based on my careful review of the applicant’s application, I believe that the only services that are implicated by a potential citation of the prior pending application, should it mature to registration for the identified services, would be:
42: scientific and technological research services; industrial analysis and research services; industrial design services
Therefore, we plan to divide the application to move these services into a separate application. Would there be anything else remaining in the original application that would be an issue vis-à-vis the prior pending? If so, we would be grateful for your guidance so we could move that into the child application as well. This will allow for more efficient prosecution of the application(s). Thank you for your consideration.
Regards,
/Allison Strickland Ricketts/
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
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