NOTE TO THE FILE
SERIAL NUMBER: 88266308
DATE: 05/16/2019
NAME: dzarick
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
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:X OTHER: e-mail correspondence
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Thursday, May 16, 2019 6:52 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Yes, that is correct. Thomas F. Poché is the one granting permission to proceed with the examiner’s amendment. Thanks!
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Thursday, May 16, 2019 3:50 PM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
One clarification: was Thomas F. Poché responding via your e-mail address in the e-mail time stamped 6:28? Should I be putting his name as the one who has given permission to proceed with the examiner’s amendment? Thanks!
Best,
Diana
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Thursday, May 16, 2019 6:47 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Thanks very much. Have a wonderful evening.
Regards,
Annie
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Thursday, May 16, 2019 3:44 PM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Thank you for confirming the changes. I will make those updates to the record and issue an examiner’s amendment.
Best,
Diana
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Thursday, May 16, 2019 6:28 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Thanks, Diana. Kindly proceed with the updates via an examiner’s amendment.
/Thomas F. Poché/
Vice President
Allergan, Inc.
Annie Chen
Allergan, Inc. | Tel 714.246.2379 | annie.chen@allergan.com | www.allergan.com
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Thursday, May 16, 2019 1:30 PM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Hi Annie,
Thank you for confirming the changes. I can make those updates to the record by way of an examiner’s amendment if you prefer.
Best,
Diana
/Diana Zarick/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 126
(571) 270-5013
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Thursday, May 16, 2019 4:04 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Dear Diana,
I hope all is well. Following up on our previous correspondence, we would like to make the following amendments based on your prior suggested wording with minor changes highlighted in green.
Class 10: Medical devices, namely, therapeutic apparatus and instruments generating high frequency electromagnetic energy for use in muscle stimulation, treatment of cellulite and soft tissue, and sculpting, shaping and contouring of the body; Medical devices, namely, medical apparatus and instruments generating high frequency electromagnetic energy for use in
electronicelectrical muscle stimulation for medical purposes, treatment of cellulite, and treatment of soft tissue by means ofelectronicelectrical nerve stimulation for medical purposes
Would appreciate your further thoughts/changes, if any. If the proposed changes are acceptable, I will file a response to office action using TEAS.
Thanks,
Annie
Annie Chen
Allergan, Inc. | 2525 Dupont Drive |Irvine |CA | 92612 | Tel 714.246.2379 | annie.chen@allergan.com | www.allergan.com
From: Chen_Annie
Sent: Tuesday, April 23, 2019 2:41 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Hi Diana,
Thank you for your follow-up comments and suggested wording. I am conferring with internal clients and will revert with our preferred phrasing in short order.
Have a good afternoon.
Respectfully,
Annie Chen
Allergan, Inc. | Tel 714.246.2379 | annie.chen@allergan.com | www.allergan.com
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Monday, April 22, 2019 10:28 AM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Hi Annie,
The wording you suggested for “medical and muscle conditioning purposes” without any extra clarification would not be definite enough of a description of what the devices are used to treat. The “medical” purpose keeps the wording indefinite, while the “conditioning” purpose sounds like an exercise and toning device in class 28, which would be outside the scope of the original wording of medical devices. Another option is to specify the type of electrical stimulation device. Electrical nerve stimulators are a definite item in Class 10 within the scope of soft tissue. I’ve incorporated this suggestion into the wording as follows in highlighted font:
Class 10: Medical devices, namely, therapeutic apparatus and instruments generating high frequency electromagnetic energy for use in muscle stimulation, treatment of cellulite and soft tissue, and sculpting, shaping and contouring of the body; Medical devices, namely, medical apparatus and instruments generating high frequency electromagnetic energy for use in electronic muscle stimulation for medical purposes, treatment of cellulite, and treatment of soft tissue by means of electronic nerve stimulation for medical purposes
/Diana Zarick/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 126
(571) 270-5013
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Friday, April 19, 2019 4:26 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Thanks for your reply, and I look forward to hearing from you next week. Have a good weekend.
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Friday, April 19, 2019 1:14 PM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Hi Annie,
I’m getting a second opinion on that because I’m not sure. I’ll get back to you sometime next week.
Best,
Diana
From: Chen_Annie [mailto:Annie.Chen@allergan.com]
Sent: Thursday, April 18, 2019 6:42 PM
To: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Subject: RE: follow up identification question for serial no. 88266308; COOLTONE
Dear Ms. Zarick,
Thank you for your prompt review and reply. Your additional suggestions appear to be generally acceptable. As for the wording to be further clarified (highlighted below), would “medical and muscle conditioning purposes” suffice?
Thanks again,
Annie
Annie Chen
Allergan, Inc. | 2525 Dupont Drive |Irvine |CA | 92612 | Tel 714.246.2379 | annie.chen@allergan.com | www.allergan.com
From: Zarick, Diana <Diana.Zarick@USPTO.GOV>
Sent: Thursday, April 18, 2019 12:55 PM
To: Chen_Annie <Annie.Chen@allergan.com>
Subject: follow up identification question for serial no. 88266308; COOLTONE
Hi Annie Chen,
In follow up to our phone call discussion today, I have a few amended identification suggestions.
You had inquired about the following amended identification:
Class 10: Medical devices, namely, medical and therapeutic apparatus and instruments generating high frequency electromagnetic energy for use in muscle stimulation, treatment of cellulite and soft tissue, and sculpting, shaping and contouring of the body
The addition of “medical and” makes the items listed after it indefinite without further clarification. The further clarification can be done by listing both “medical” and “therapeutic” apparatus and instruments separately. Each item listed after the “medical apparatus and instruments” must be definite in Class 10 on its own. I was unable to find medical apparatus and instruments for “sculpting, shaping and contouring of the body,” so I would recommend only listing that within the “therapeutic” heading to be acceptable. Here are some additional suggestions, with additions shown in bold and underlined font, and items for you to clarify are in bold italics:
Class 10: Medical devices, namely, therapeutic apparatus and instruments generating high frequency electromagnetic energy for use in muscle stimulation, treatment of cellulite and soft tissue, and sculpting, shaping and contouring of the body; Medical devices, namely, medical apparatus and instruments generating high frequency electromagnetic energy for use in electronic muscle stimulation for medical purposes, treatment of cellulite and treatment of soft tissue by means of electronic stimulation for {specify purpose, e.g., physical therapy, rehabilitative and pain management} purposes
, and sculpting, shaping and contouring of the body
I am heading out of the office for the next couple of hours in case you try to call me, but should be back later if you have follow up questions.
Best,
Diana
/Diana Zarick/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 126
(571) 270-5013
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