NOTE TO THE FILE
Sent to TICRS as Serial Number: 88978610SERIAL NUMBER: 88298093
DATE: 09/10/2020
NAME: kmoninghoff
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 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:X OTHER:
From: Moninghoff, Kim
Sent: Tuesday, September 8, 2020 8:46 AM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Application Nos.88978610, 88298093 ELEXCORE (Docket #4041TK200031)
Good morning,
You did not request to delete the 1(b) basis. As you indicated in your email below, you stated that 44(e) was the sole basis, as if it had been since filing, which is not correct. I assumed you were mistaken, and I assume the ITU paralegal that processed the request to divide assumed that as well.
The corrected NOA still includes both filing bases and the following instructions for correcting/amending that information:
If you believe this NOA should not have issued or correction of the information shown below is needed, you must submit a request to the Intent-to-Use Unit. Please use the "Post-Publication Amendment" form under the "POST-APPROVAL/PUBLICATION/POST NOTICE OF ALLOWANCE (NOA) AMENDMENT FORMS" category, available at http://www.gov.uspto.report/trademarks-application-process/filing-online/post-approvalpublicationpost-notice-allowance-noa. Do NOT reply to this e-mail, as e-mailed filings will NOT be processed.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Aurini, Geoffrey <gaurini@HDP.com>
Sent: Saturday, September 5, 2020 2:32 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Application Nos.88978610, 88298093 ELEXCORE (Docket #4041TK200031)
Hi, Kim-sorry I could not respond before now. In the request to divide we did say there was no1b basis and the goods based on the foreign registration should move to registration. Shouldn’t that be enough to have avoided the NOA?
Hope you have/had a great weekend.
Regards
/gda/,
Geoff
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Wednesday, September 2, 2020 10:46 AM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: Application Nos.88978610, 88298093 ELEXCORE (Docket #4041TK200031)
EXTERNAL EMAIL
Mr. Aurini,
I accepted the SOU that you filed for the child application (listed first in the subject line) created by the request to divide.
I noticed that the request to divide and SOU include statements that the parent application has Section 44(e) as the sole filing basis. However, I can’t find anything in the record to support this. The original application includes a dual basis Sections 1(b)/44(e) for all four classes with no parenthetical limitations as to any of the goods. I don’t see any limitations added in the 9/16/2019 response, and the original NOA also lists both filing bases with no limitations as to any specific goods.
If you can point to something in the record, where this change to the basis was made, I can take a look. Otherwise, you’ll need to file an amendment to delete the Section 1(b) basis using the first form on this page: http://www.gov.uspto.report/trademarks-application-process/filing-online/post-approvalpublicationpost-notice-allowance-noa.
Please let me know if you have any questions. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
HARNESS, DICKEY & PIERCE, PLC LEGAL NOTICE: The information contained in this transmission is intended only for the individual(s) or entity(ies) to whom it is addressed. It may contain information protected from use and/or disclosure by law, including information that is protected as confidential, attorney-client privileged, attorney work product and/or trade secrets. If the reader of this message is not the intended recipient, or an employee or agent responsible for delivering this message to the addressee, the reader is hereby notified that any use, distribution or copying of this communication is strictly prohibited. If you believe you have received this facsimile or message in error, please immediately notify us at our expense by return mail or e-mail and permanently delete or destroy all copies of the message.
To comply with U.S. Treasury regulations, we advise you that any discussion of Federal tax issues in this communication was not intended to be used, and cannot be used, by any person (i) to avoid penalties that may be imposed by the Internal Revenue Service, or (ii) to promote, market or recommend to another party any matter addressed herein. Any portions of this transmission containing controlled technical data are restricted by U.S. export laws and regulations, and may not be distributed or retransmitted to non-U.S. persons without appropriate licensing or a licensing exemption. Neither this information block, nor the signature block, nor the typed name of the sender, nor anything else in this message is intended to constitute an electronic signature unless a specific statement to the contrary is included.
This email has been scanned for email related threats and delivered safely by Mimecast.
For more information please visit http://www.mimecast.com