Notation to File

MOCHA AMERICANO GRANDE AGAIN

Lambert Devoe

Notation to File

NOTE TO THE FILE

SERIAL NUMBER: 88297329

DATE:    04/23/2019

NAME: cyi1

NOTE:

Searched:
     Google
     Lexis/Nexis
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:
     Geographic significance
     Surname
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email       Thomas Humphrey, Esq., 4.23.19                        Attorney/Applicant

     Requested Law Library search      X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

From: Tom Humphrey [mailto:thumphrey@whe-law.com]
Sent: Tuesday, April 23, 2019 12:35 PM
To: Yi, Crystal <Crystal.Yi@USPTO.GOV>
Cc: Laura Koehler <lkoehler@whe-law.com>
Subject: Re: U.S. Trademark Application Serial No. 88297329 (MOCHA AMERICANO GRANDE AGAIN)

Examiner Yi,

Thank you for your note below. You are authorized to add the translation statement.

Thank you,

Tom Humphrey

Attorney for Applicant Lambert Devoe

From: Yi, Crystal
Sent: Tuesday, April 23, 2019 11:47:26 AM (UTC-05:00) Eastern Time (US & Canada)
To: Tom Humphrey
Subject: U.S. Trademark Application Serial No. 88297329 (MOCHA AMERICANO GRANDE AGAIN)

Good morning Thomas:

I am the examining attorney reviewing U.S. Patent and Trademark Office Application Serial No. 88297329 (MOCHA AMERICANO GRANDE AGAIN). I have identified the following issue that I believe can be resolved via email:

Translation Statement: A translation statement is required. Applicant may adopt the following:

The English translation of the word “GRANDE” in the mark is “GREAT”.

This change can be made on my end through an Examiner’s Amendment once you confirm agreement with the above change.

In addition, I want to provide an advisory for possible ornamentation at the Statement of Use stage for Applicant’s International Class 016, 025, and 026 goods. Upon consideration of a statement of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. An ornamental refusal can be avoided by providing specimens that show appropriate source-indicating use of the mark in relation to the goods.

Please respond to this email by 12 p.m. EST on Wednesday, April 24, 2019.

Sincerely,

Crystal H. Yi

Trademark Examining Attorney

Law Office 123

U.S. Patent & Trademark Office

571.270.0763

PLEASE NOTE: All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to any Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to a refusal and/or requirement in any Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.