Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88255252

DATE:                                08/17/2019

NAME:                               srichards

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

 

 

From: Richards, Susan
Sent: Saturday, August 17, 2019 9:13 PM
To: Wade Schnell <dwschnell@ngtechlaw.com>
Cc: Richards, Susan <Susan.Richards@USPTO.GOV>
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

Thank you for your email. I will issue the examiner’s amendments this evening and then forward the applications to publication.  Since the issues relating to the identifications of goods have been resolved, there is no need to submit any additional informational materials.

 

Thank you

 

Susan

 

From: Wade Schnell [mailto:dwschnell@ngtechlaw.com]
Sent: Wednesday, August 07, 2019 2:25 PM
To: Richards, Susan <Susan.Richards@USPTO.GOV>
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

Examiner Richards;

 

I have discussed the proposed amendments to the goods with my client.  The following is what we came up with based on your suggestions:

 

Lighting apparatus in the nature of mobile lighting devices for locating objects on a surface and for locating glass on a surface; lighting apparatus in the nature of a mobile rotating lighting device for locating an object on a surface and for locating glass on a surface; lighting apparatus in the nature of mobile lighting devices for illuminating objects on a surface; lighting apparatus in the nature of mobile lighting devices for illuminating objects within a liquid; lighting apparatus in the nature of mobile lighting devices for illuminating glass on a surface; lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass on a surface; lighting apparatus in the nature of mobile rotating lighting devices for illuminating objects within a liquid; lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass on a surface; lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to identify objects, but also containing an integral vacuuming component for that may be used to vacuum said objects; and lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to illuminate objects, but also containing an integral vacuuming component for that may be used to vacuum said objects

 

Please let me know if this is acceptable and I will prepare and file the response.  Unless you want to do an examiner’s amendment.

 

Regarding the Request for Information, would the patent that covers this device suffice?

 

I look forward to your comments.

 

Regards,

 

 

D. Wade Schnell

 

The Noblitt Group, PLLC

8800 North Gainey Center Drive

Suite 279

Scottsdale, AZ 85258

480.994.9888  x819 (p)

480.994.9025

 

From: Richards, Susan [mailto:Susan.Richards@USPTO.GOV]
Sent: Tuesday, March 26, 2019 11:27 AM
To: Wade Schnell
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

I need to move the cases forward by Thursday – thank you

 

From: Wade Schnell [mailto:dwschnell@ngtechlaw.com]
Sent: Tuesday, March 26, 2019 2:26 PM
To: Richards, Susan <Susan.Richards@USPTO.GOV>
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

Susan,

 

Thank you.  I will contact my client and then let you know what he has to say.  When do you need a response?

 

Thank you for your assistance with this matter.

 

D. Wade Schnell

 

The Noblitt Group, PLLC

8800 North Gainey Center Drive

Suite 279

Scottsdale, AZ 85258

480.994.9888  x819 (p)

480.994.9025

 

From: Richards, Susan [mailto:Susan.Richards@USPTO.GOV]
Sent: Tuesday, March 26, 2019 10:57 AM
To: Wade Schnell
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

All of the suggestions are OK – They are giving you options re the device with the vacuum feature – those will either go in Class 7 or Class 11, depending on  how they are identified

 

 

 

From: Wade Schnell [mailto:dwschnell@ngtechlaw.com]
Sent: Tuesday, March 26, 2019 1:30 PM
To: Richards, Susan <Susan.Richards@USPTO.GOV>
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

So which ones are the correct proposed goods?  I need to send a summary of your proposed amendments to the goods to my client for review.

 

Would the following be correct?

 

FOR:

Device for locating an object on a surface; device for locating glass on a surface; rotating device for locating an object on a surface; rotating device for locating glass on a surface; device for illuminating an object on a surface; device for illuminating an object within a medium; device for illuminating glass on a surface; rotating device for illuminating an object on a surface; rotating device for illuminating an object within a medium; rotating device for illuminating glass on a surface; device for identifying an object and then vacuuming it up; and device for illuminating an object and then vacuuming it up

 

 

Class 11

1.      “Device for locating an object on a surface; device for locating glass on a surface”

 

-        Proposed amendment:  Lighting apparatus in the nature of mobile lighting devices for locating objects of a surface and  for locating glass on a surface

 

2.       “rotating device for locating an object on a surface; rotating device for locating glass on a surface”

 

Proposed amendment: Lighting apparatus in the nature of a mobile rotating lighting device for locating an object on a surface and for locating glass on a surface

 

3.      “ device for illuminating an object on a surface”

 

proposed amendment:  Lighting apparatus in the nature of mobile lighting devices for illuminating objects of a surface

 

4.      “ device for illuminating an object within a medium”

 

Proposed Amendment - Lighting apparatus in the nature of mobile lighting devices for illuminating objects within ______________[please clarify what is meant by “medium”]

 

5.      “device for illuminating glass on a surface”

 

Proposed amendment  - Lighting apparatus in the nature of mobile lighting devices for illuminating glass on a surface;

 

6.       rotating device for illuminating an object on a surface;

 

Proposed amendment  - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass on a surface

 

7.      rotating device for illuminating an object within a medium;

 

Proposed amendment - - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating objects within ______________[please clarify what is meant by “medium”]

 

8.      rotating device for illuminating glass on a surface;

 

Proposed amendment - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass of a surface

 

Another proposed amendment:

 

Lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to identify objects, but also containing an integral vacuuming component for that may be used to vacuum said objects

 

Lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to illuminate objects, but also containing an integral vacuuming component for that may be used to vacuum said objects

 

 

 

For #s 1 – 8, the word “mobile” may also be replaced with the word “robotic” if accurate

 

Class 7

#9s would be in Class 7

 

9.      “Device for identifying an object and then vacuuming it up;  Device for illuminating an object and then vacuuming it up”

 

 

Proposed Amendment –

 

 

Personal vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; Personal vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them up

 

Robotic vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; robotic vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them

 

 

D. Wade Schnell

 

The Noblitt Group, PLLC

8800 North Gainey Center Drive

Suite 279

Scottsdale, AZ 85258

480.994.9888  x819 (p)

480.994.9025

 

From: Richards, Susan [mailto:Susan.Richards@USPTO.GOV]
Sent: Tuesday, March 26, 2019 4:57 AM
To: Wade Schnell
Cc: Richards, Susan
Subject: RE: 88255209 for GLAFIN and 88255252 for GFI (Stylized)- 2 more suggestions for the devices with the vacuuming function

 

Mr. Schnell –

 

(First, my email below referred to Paragraphs 9 and 10 – I combined the two items into Paragraph 9 – I apologize for the confusion. Also, Paragraph 1 in yesterday’s email has a typographical error – “of” should be on” – again, I apologize for the error

 

 

Regarding #9 below for the devices with a vacuuming function – I wanted to provide you with some additional proposed wording:

 

 

9.            “Device for identifying an object and then vacuuming it up;  Device for illuminating an object and then vacuuming it up”

 

From yesterday:

Class 7

 

1. “Device for identifying an object and then vacuuming it up;  Device for illuminating an object and then vacuuming it up”

 

 

Proposed Amendment –

 

 

Personal vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; Personal vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them up

 

Robotic vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; robotic vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them

 

 

Additional  Suggestions:

 

Class 11

 

Lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to identify objects, but also containing an integral vacuuming component for that may be used to vacuum said objects

 

Lighting apparatus in the nature of mobile lighting devices primarily used for lighting areas in order to illuminate objects, but also containing an integral vacuuming component for that may be used to vacuum said objects

 

 

 

Thank you

 

Susan

 

From: Richards, Susan
Sent: Monday, March 25, 2019 4:12 PM
To: dwschnell@ngtechlaw.com
Cc: Richards, Susan <Susan.Richards@USPTO.GOV>
Subject: 88255209 for GLAFIN and 88255252 for GFI (Stylized)

 

  88255209 for GLAFIN and      88255252  for GFI (Stylized)

 

FOR:

Device for locating an object on a surface; device for locating glass on a surface; rotating device for locating an object on a surface; rotating device for locating glass on a surface; device for illuminating an object on a surface; device for illuminating an object within a medium; device for illuminating glass on a surface; rotating device for illuminating an object on a surface; rotating device for illuminating an object within a medium; rotating device for illuminating glass on a surface; device for identifying an object and then vacuuming it up; and device for illuminating an object and then vacuuming it up

 

 

Mr. Schnell

 

I have completed searches for both of the marks and have not located any conflicting marks.

 

Based on the checking that I’ve done, the following format for identifying the goods is suggested:

 

Class 11

1.      “Device for locating an object on a surface; device for locating glass on a surface”

 

-        Proposed amendment:  Lighting apparatus in the nature of mobile lighting devices for locating objects of a surface and  for locating glass on a surface   [“OF” SHOULD BE “ON]

 

2.       “rotating device for locating an object on a surface; rotating device for locating glass on a surface”

 

Proposed amendment: Lighting apparatus in the nature of a mobile rotating lighting device for locating an object on a surface and for locating glass on a surface

 

3.      “ device for illuminating an object on a surface”

 

proposed amendment:  Lighting apparatus in the nature of mobile lighting devices for illuminating objects of a surface

 

4.      “ device for illuminating an object within a medium”

 

Proposed Amendment - Lighting apparatus in the nature of mobile lighting devices for illuminating objects within ______________[please clarify what is meant by “medium”]

 

5.      “device for illuminating glass on a surface”

 

Proposed amendment  - Lighting apparatus in the nature of mobile lighting devices for illuminating glass on a surface;

 

6.       rotating device for illuminating an object on a surface;

 

Proposed amendment  - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass on a surface

 

7.      rotating device for illuminating an object within a medium;

 

Proposed amendment - - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating objects within ______________[please clarify what is meant by “medium”]

 

8.      rotating device for illuminating glass on a surface;

 

Proposed amendment - Lighting apparatus in the nature of mobile rotating lighting devices for illuminating glass of a surface

 

 

For #s 1 – 8, the word “mobile” may also be replaced with the word “robotic” if accurate

 

Class 7

#9s and 10 would be in Class 7

 

9.      “Device for identifying an object and then vacuuming it up;  Device for illuminating an object and then vacuuming it up”

 

 

Proposed Amendment –

 

 

Personal vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; Personal vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them up

 

Robotic vacuum cleaners with an integral  lighting feature for use in identifying and locating objects and vacuuming them up; robotic vacuum cleaners with an integral  lighting feature for use in illuminating and locating objects and vacuuming them

 

 

The Classification of #9-10 is determined by the primary function of the goods. Since most vacuums including lighting features, I have proposed wording that identifies the vacuum function as the primary feature and the lighting feature as an integral component of the goods.

 

Thank you

 

Susan

 

 

 

/Susan A. Richards/

Susan A. Richards

Trademark Examining Attorney

Law Office 103

(571) 272-8266

Susan.Richards@uspto.gov