NOTE TO THE FILE
SERIAL NUMBER: 88284075
DATE: 04/15/2019
NAME: reubank
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 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:Hello:
The amendments to the identification appear to be acceptable. The specimen should also be acceptable for class 37. I will amend the identification to:
International Class 37:
Technical support services, namely, providing technical advice related to the application and use of coatings, concrete admixtures, and chemicals
International Class 40:
Technical support services, namely, providing technical advice related to the manufacture of coatings, concrete admixtures, and chemicals
What I will do is issue an examiner’s amendment for both applications with a priority action section requiring an additional fee for the added class. Applicant may provide the additional fee in response to the priority action.
Please let me know if you have any questions or concerns.
Regards,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577
From: Reagan Fibbe [mailto:reagan@fibbelightner.com]
Sent: Monday, April 15, 2019 12:26 PM
To: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Cc: Robin Lightner Maisashvili <robin@fibbelightner.com>; Fibbe Lightner Trademarks <tm@fibbelightner.com>
Subject: Re: USPTO Trademark Application No. 88284075 and 88284072
Dear Ms. Eubank,
Thank you for your email below. The technical support services include advice related to manufacture as well as application/use. To that end, may we amend the application as follows, adding Class 37:
Class 37: Technical support services, namely, providing technical advice related to the application and use of coatings, concrete admixtures, and chemicals
Class 40: Technical support services, namely, providing technical advice related to the manufacture of coatings, concrete admixtures, and chemicals
; Mixing lubricants for third parties
Applicant wishes to delete “mixing lubricants for third parties.”
We believe the specimen submitted with the application is sufficient for both Class 37 and Class 40. Are you able to make the above-noted changes by Examiner’s Amendment and then issue an Office Action for us to pay the filing fee for the additional class? Or is there a more efficient way to handle it? Thanks in advance.
Best,
Reagan
A. Reagan Fibbe
Fibbe Lightner LLP
3733-1 Westheimer Road, No. 1009
Houston, TX 77027 U.S.A.
832.338.8090
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From: "Eubank, Rebecca" <Rebecca.Eubank@USPTO.GOV>
Date: Friday, April 12, 2019 at 12:56 PM
To: Reagan Fibbe <tm@fibbelightner.com>
Cc: Reagan Fibbe <reagan@fibbelightner.com>, Robin Lightner <robin@fibbelightner.com>
Subject: USPTO Trademark Application No. 88284075 and 88284072
Dear A. Reagan Fibbe,
I am the trademark examining attorney reviewing application number 88284075 and 88284072. There is a common issue in the identifications that I think we can resolve by phone/email.
Specifically, the identification “Technical support services, namely, providing technical advice related to coatings, concrete admixtures, and chemicals” is overbroad. This may encompass technical support for application of coatings, which would be classified in International Class 37. Applicant may adopt the following in International Class 40, if accurate:
Technical support services, namely, providing technical advice related to the manufacture of coatings, concrete admixtures, and chemicals; Mixing lubricants for third parties
With your permission, I can make these changes in the record. If you have any questions, please contact me at the phone number and email listed below.
Your prompt response before close of business on Monday, April 15, is appreciated. After that time I will have to refuse the application for the reasons stated above.
Regards,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577