Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88295495

DATE:                                06/18/2019

NAME:                               sjackson10

NOTE:         

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From: Yael Cabilly [mailto:yael@e-cabilly.com]
Sent: Wednesday, June 12, 2019 10:26 AM
To: Jackson, Steven <Steven.Jackson@USPTO.GOV>
Cc: Yaffa Dagan <yaffa@e-cabilly.com>
Subject: FW: U.S. TRADEMARK APPLICATION NO. 88295495 - NIMBLE - OMM-T-102-US

 

Dear Examiner Jackson,

 

I am writing to you in relation to the office action dated April 24, 2019 in the subject matter.

 

We would like to try and resolve the issues raised in the Office Action with respect to the identification of goods. For this purpose, Applicant requests to amend the identification of goods in classes 3 and 11, as detailed in the attached word document.

 

With respect to the identification of goods in classes 08 and 21, I would appreciate your input regarding the issues as detailed below:

 

The application was filed for the following description in class 08:

 

Class 08:

Home manicure kits; (1) Nail polish or gel device comprising software and hardware needed to accurately paint finger and toe nail in a timely manner; Nail cleaner; Nail polish remover; Nail polish top coat; Nail polish base coat; Nail gel; Nail bonder and nail paint; Manicure device; (2) Manicure device that removes existing nail polish and nail gel and then paints nails of fingers and toes in a fully automated manner; Gel polish removal device; Electrolysis apparatus for hair removal; Electric hair straighteners; Electric hand-held hair styling irons; Electric hair styling irons; (3) Electric or non-electric depilatory appliances; Electric razors; Razor cases; Razors; Safety razors; Electric beard trimmers; Moustache and beard trimmers

 

(1)   We note that due to a human error there was a typo in the description of the item number (1) above "nail polish or gel device comprising software and hardware needed to accurately paint finger and toe nail in a timely manner, nail cleaner, nail polish remover, nail polish top coat, nail polish base coat, nail gel, nail bonder and nail paint", since we erroneously used a semicolon ";" instead of a coma ",", as it was done in Applicant's foreign application – an extract thereof is attached. Please confirm this can be amended.

 

(2)   In the framework of the examination of Applicant's trademark application SN 79249638 for a similar list of goods in class 08, we were informed by the examiner Ms. Biache, that the wording “electric cosmetic treatment apparatus, namely nail or gel polish apparatus and manicure apparatus for accurately painting finger and toe nails in a timely manner, nail cleaning, nail polish removing, nail polish top coating, nail polish base coating and applying nail gel and nail bonder” and “electric manicure apparatus for removing existing nail polish and nail gel and then painting nails of fingers and toes in a fully automatic manner” are misclassified and belong in International Class 21. (please see attached our correspondence with Ms. Biache in this regard). Accordingly, please confirm that we can transfer the items numbers (1) and (2) from class 08 to class 21 and amend the identification of goods in classes 08 and 21 to read as following:

 

Class 8

Home manicure sets; Electric cosmetic treatment apparatus, namely, nail polish or gel device apparatus for use as a hand tool comprising featuring software and hardware needed to accurately paint finger and toe nail in a timely manner, and for nail cleaning, nail polish removing, nail polish top coating, nail polish base coating and applying nail gel, nail bonder and nail paint; Manicure deviceapparatus, namely, manicure sets and nail buffers; Electric manicure device apparatus for use as a hand tool thatfor removing existing nail polish and nail gel and then paints nails of fingers and toes in a fully automated manner; Gel polish removal device, namely, nail buffer and nail polish scraper as a hand tool; Electrolysis apparatus for hair removal; Electric hair straighteners; Electric hand-held hair styling irons; Electric hair styling irons; Electric or non-electric depilatory appliances[this item appears on the USPTO manual as "Depilatory appliances [electric or non-electric"]; Electric razors; Razor cases; Razors; Safety razors; Electric beard trimmers; Moustache and beard trimmers.

 

Class 21

“Electric cosmetic treatment apparatus, namely nail or gel polish apparatus comprising software and hardware needed to accurately painting finger and toe nails in a timely manner, nail cleaning, nail polish removing, nail polish top coating, nail polish base coating and applying nail gel, nail bonder and nail paint; electric manicure apparatus for removing existing nail polish and nail gel and then painting nails of fingers and toes in a fully automatic manner [transferred from class 08]; Electric make-up removing appliances; Appliances for removing make-up, electric; Make-up removing appliances; Electric nail polish removing appliances; Electric mask removing appliances; Electric toothbrushes; Heads for electric toothbrushes; Electric facial face cleansing brushes; Electric rotating hair brushes; Electrically-heated hair brushes; Hair brushes; Hot air hair brushes; Hair tinting brushes; Shaving brushes; Shaving brush stands; Shaving brush holders; Shaving bowls; Stands for shaving brushes; Teeth whitening trays sold empty for home use; Cosmetic applicators sold empty for brushes; sonic oscillating brushes for cosmetic purposes; electric cosmetic brushes”

 

(3)   In addition, we note that the item number (3) "Electric or non-electric depilatory appliances" appears in the USPTO manual as "Depilatory appliances [electric or non-electric]" in class 08. Please confirm that this item is acceptable as written.

 

I would appreciate it if you could please advise if the above-mentioned amendments to the list of goods can be acceptable and put the application in condition to be approved for publication.

 

Thank you for your kind assistance in this matter!

 

 

Respectfully,

Yael Cabilly

 

Yael Cabilly, Esq.

Cabilly & Co., IP and E-Commerce Law

M +972.52.4668053

P +972.9.9633593 

6 Maskit St., P.O.B 12352
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www.e-cabilly.com