Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88277569

DATE:                                04/12/2019

NAME:                               vcerda

NOTE:         

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From: Cerda, Victor
Sent: Friday, April 12, 2019 11:31 AM
To: jake oh <jake.oh@gmail.com>
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88277569 - BUCKSTER - N/A

 

Good morning,

 

Your summary below is not correct.  You are indeed responding to a refusal of your registration, one possible response to which is providing an adequate specimen demonstrating a use in commerce of the applied-for mark (BUCKSTER) for the services in Class 45.  That response will require—if you’re providing a substitute specimen as discussed via telephone—a verified specimen.  A verified substitute specimen requires you to submit a declaration (available via the electronic form you’re using) with it, which requires its own (i.e., a second) signature.  Please read the letter you received closely, as this is discussed in some detail there.

 

Please call me when you’re in front of your computer, and I’d be happy to answer any questions you may still have.

 

To the extent it’s helpful, below are links to websites we discussed on the last call, which appear to demonstrate your services in Class 45.  These pages serve as examples for possible substitute specimens you may consider attaching in response to the recent refusal of your registration.

 

http://www.buckster.com/

http://play.google.com/store/apps/details?id=com.buckster.buckster

 

Best regards,

 

Victor Cerda

Trademark Examining Attorney – Law Office 123

United States Patent & Trademark Office

(571) 270-1280 |  victor.cerda@uspto.gov

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

 

From: jake oh [mailto:jake.oh@gmail.com]
Sent: Thursday, April 11, 2019 8:01 PM
To: Cerda, Victor <Victor.Cerda@USPTO.GOV>
Subject: Re: U.S. TRADEMARK APPLICATION NO. 88277569 - BUCKSTER - N/A

 

Hi Mr Cerda

 

Sorry for bugging you again but I feel lost like a kid on his first day of preschool.  

So i was wondering if you can guide me little here.

 

I watched few times the video#8 about specimen as you instructed.  Then i clicked the link in the office action email. 

That took me to Response form page,  so i clicked again on 1.Response to examining attorney office action form.

Then i entered the serial number of this application, and that took me to this page.  (below i copied and pasted it)

There are many yes/no questions here, and i wasn't sure what to pick.

My guess is that i should pick NO for everything except the number 10 (Do you need to submit a Signed Declaration to verify an application? 

You told me that i need to sign declaration, correct?  

 

Then continue.  or am i wrong?

 

Again, so sorry for bothering you.   (I have tried so many times to trademark this in the past, but i got rejected every single time.  so i am little bit afraid to make another mistakes here )

 

Best regards

Jake

 

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Do you need to respond to a refusal to register your mark, including (but not limited to) a possible finding that your mark appears to be: likely to cause confusion with another mark(s) merely descriptive (or generic) or deceptively misdescriptive primarily merely a surname geographically descriptive or geographically deceptively misdescriptive deceptive functional multiple marks instead of a single mark a protected symbol (e.g., a flag, the Red Cross) used in a manner that would not be perceived as actually being a trademark/servicemark* You must answer "Yes" to this question to submit your arguments against the refusal, and if necessary, attach supporting evidence, to attempt to convince the examining attorney to withdraw the refusal. *NOTE: To submit a "substitute specimen" to overcome a refusal, also answer "Yes" to #2. ( ) Yes (X)No   2. 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On Wed, Apr 10, 2019 at 4:24 PM jake oh <jake.oh@gmail.com> wrote:

Got it!

 

Thank you so much and have a wonderful rest of the day!  

 

On Wed, Apr 10, 2019 at 4:23 PM Cerda, Victor <Victor.Cerda@uspto.gov> wrote:

It was a pleasure speaking with you, Mr. Oh.  It’s no problem sending the link via this email as well.  The video I was referencing is available here:  http://www.gov.uspto.report/trademarks-getting-started/process-overview/trademark-information-network .  Specifically, you’ll want to watch Video #8 (“Specimen”).

 

Best regards,

 

Victor Cerda

Trademark Examining Attorney – Law Office 123

United States Patent & Trademark Office

(571) 270-1280 |  victor.cerda@uspto.gov

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

 

From: jake oh [mailto:jake.oh@gmail.com]
Sent: Wednesday, April 10, 2019 7:18 PM
To: Cerda, Victor <Victor.Cerda@USPTO.GOV>
Subject: Re: U.S. TRADEMARK APPLICATION NO. 88277569 - BUCKSTER - N/A

 

Thank you Mr Cerda for taking your time on this application.

 

May i bother you with one more thing?

Maybe i misunderstood, but i was hoping to get that 5 min video link that shows how this thing needs to be done.

Could you provide that video or link for me?  Or should i just google it?

 

Best regards

Jake

 

On Wed, Apr 10, 2019 at 4:05 PM ecom123 <ecom123@uspto.gov> wrote:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/10/2019 FOR U.S. APPLICATION SERIAL NO. 88277569

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/10/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

victor.cerda@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.