Notation to File

DRIVE POLITELY

The Next Street, LLC

Notation to File

NOTE TO THE FILE

SERIAL NUMBER: 88279041

DATE:    03/02/2020

NAME: tseling

NOTE:

Searched:
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     OTHER:

From: Seling, Tyler
Sent: Monday, March 2, 2020 10:11 AM
To: Peters, Carol H. <cpeters@hinckleyallen.com>
Subject: RE: Gentle Reminder - Nonfinal Office Action - Response to SOU - Application No. 88279041 for DRIVE POLITELY

Hi,

Apologies for the delayed response. Per the information you provided below, since you filed an “insurance” extension before the expiration of the then-current deadline, you have until the extended deadline to file a substitute specimen. See TMEP 1108.03. As such, you should be able to file a further SOU as to Class 35 without needing a division.

Best,

Tyler

Tyler M. Seling

Examining Attorney

Law Office 112

(571) 272-0272

Tyler.Seling@uspto.gov

From: Peters, Carol H. <cpeters@hinckleyallen.com>
Sent: Friday, February 28, 2020 12:09 PM
To: Seling, Tyler <Tyler.Seling@USPTO.GOV>
Subject: Gentle Reminder - Nonfinal Office Action - Response to SOU - Application No. 88279041 for DRIVE POLITELY

Please see our email below.

From: Peters, Carol H.
Sent: Tuesday, February 18, 2020 10:59 AM
To: tyler.seling@uspto.gov
Cc: TM Docket <tmdocket@hinckleyallen.com>
Subject: Nonfinal Office Action - Response to SOU - Application No. 88279041 for DRIVE POLITELY

Dear Examining Attorney Seling:

We are in receipt of your non-final Office Action dated January 6, 2020, refusing acceptance of the specimen of use we submitted for Class 35 services under the Statement of Use filed on November 13, 2019. We understand your position with respect to not accepting the Class 35 specimen of use.

Applicant would like to submit a substitute specimen of use; however, the First Use Date of the specimen would not be on or before the filing date of the SOU or November 13, 2019. We filed a Request for Six-Months Extension of Time on January 8, 2020 to extent the statutory period for the SOU until July 30, 2020.

If we cannot withdraw the SOU for Class 35 according to your non-final Office Action, can we respond to the Action by changing the filing basis for Class 35 from 1(a) to 1(b)? Thereafter, we would need to file an acceptable specimen of use as long as we file the requisite Six-Month Extension and pay the applicable fee. Is my thinking correct?

Would we need to file a Request To Divide this application in order to file a second SOU for Class 35 services? Could we file the Request To Divide in response to your Office Action, as well as change the filing basis? Please advise.

Thank you in advance for your assistance.

Best regards,

Carol

Carol H. Peters
Intellectual Property Counsel

Hinckley Allen
28 State Street
Boston, MA 02109-1775
p: 617-378-4460 | c: 617-833-5090 | f: 617-345-9020
cpeters@hinckleyallen.com