NOTE TO THE FILE
SERIAL NUMBER: 88298270
DATE: 04/29/2019
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:
X 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:X OTHER:
From: Moninghoff, Kim
Sent: Thursday, April 25, 2019 8:08 AM
To: tmdocketing.colombo@hoveywilliams.com
Subject: Trademark Application #88298270 CREST (Docket #52115)
Mr. Colombo,
I’ve been assigned to review this trademark application. Before I can approve the mark for publication, there are two issues that must be addressed. I may be able to take care of these for you by Examiner’s Amendment if you provide your consent to the amendments below.
(1) Identification/classification of services. The identification of services includes business consulting services in Class 41. These must be reclassified in Class 35. The applicant’s coaching services also must be amended to specify the type of coaching provided, such as professional coaching. The following amendments would address these issues:
advertising and marketing; business marketing services; business consulting in the field of water damage restoration, in Class 35.
business training; training courses in strategic planning relating to advertising, promotion, marketing and business; training and professional coaching in the field of water damage restoration, in Class 41.
(2) Section 2(d) Refusal. There are two registrations that combine the term CREST with descriptive wording for advertising/marketing services:
Registration No. 4684107 THE CREST MAGAZINE for “Advertising services,” in Class 35.
Registration No. 5346132 MARKETCREST for “Marketing and advertising services; Marketing consulting; Search engine optimization for sales promotion; Pay per click (PPC) advertising management service,” in Class 35.
These registrations are able to coexist because they each include a term, MAGAZINE/MARKET, not found in the other mark. In contrast, the applicant’s mark does not include any term with CREST to distinguish it from these marks. If you consent to further limit the applicant’s Class 35 services to the following, I can avoid issuing a Section 2(d) refusal as to these registrations:
business consulting in the field of water damage restoration, in Class 35.
If you consent to all of the amendments discussed above, I can enter them by Examiner’s Amendment and approve the mark for publication.
If you would like an opportunity to provide argument/evidence regarding the refusal, you can still provide your consent to the amendments in (1) above. I would then issue a combined Examiner’s Amendment/Priority Action, which includes the Section 2(d) refusal for the advertising and marketing services.
You can provide your consent to either of these options by reply email or phone. If you have any questions, please let me know. As a reminder, I cannot accept argument/evidence by email so you would need to wait until I issue the above refusal and submit any argument/evidence in a formal response.
If I don’t hear back from you by the end of the day Tuesday (4/30), I will issue a formal Office action with the above refusal and requirement. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
Fax: 571-273-4738
All informal e-mail communications relevant to this application will be placed in the official application record.