NOTE TO THE FILE
Sent to TICRS as Serial Number: 88302807SERIAL NUMBER: 88299539
DATE: 05/01/2019
NAME: wjackson
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:From: Thomas Behenna [mailto:tbehenna@aol.com]
Sent: Wednesday, May 01, 2019 10:39 AM
To: Jackson, William <William.Jackson@USPTO.GOV>
Subject: Granite City Electric Trademark Applications
Bill,
Yes--That sounds perfect.
Thank you.
I want to be in a position to be able to read, digest and respond to your remarks, requests and suggestions at a time when I can give the matter the full attention it deserves.
Regards,
Tom
Thomas E. Behenna, Esq.
60 State Street Suite # 700
Boston, MA 02109
Tel: (617) 720-2661
Fax: (617) 720-4111
-----Original Message-----
From: Jackson, William <William.Jackson@USPTO.GOV>
To: Thomas Behenna <tbehenna@aol.com>
Sent: Wed, May 1, 2019 10:31 am
Subject: RE: Granite City Electric Trademark ApplicationsDear Tom,
I will issue priority actions for the applications, as I have a deadline today for the applications. We can still do examiner’s amendments next week when you have more time. Please let me know if this works for you.
Regards,
Bill
From: Thomas Behenna [mailto:tbehenna@aol.com]
Sent: Wednesday, May 01, 2019 10:29 AM
To: Jackson, William <William.Jackson@USPTO.GOV>
Subject: Re: Granite City Electric Trademark Applications
Mr. Jackson
Thank you for your recent e-mails and suggestions.
Would it be OK if I get back to you early next week relative thereto?
I am now working on other legal matters that demand my immediate attention.
If you would like to hear back back from me sooner please let me know and I will make that happen.
Thank you for your consideration.
Regards,
Tom.
Thomas E. Behenna, Esq.
60 State Street Suite # 700
Boston, MA 02109
Tel: (617) 720-2661
Fax: (617) 720-4111
-----Original Message-----
From: Jackson, William <William.Jackson@USPTO.GOV>
To: tbehenna@aol.com <tbehenna@aol.com>
Sent: Wed, May 1, 2019 10:19 am
Subject: FW: Granite City Electric Trademark ApplicationsDear Mr. Behenna:
I wanted to follow up with you in connection with my earlier email regarding the Granite City Electric trademark applications. Please review the email below and let me know if the changes are acceptable, or if you have any questions.
Sincerely,
Bill Jackson
From: Jackson, William
Sent: Monday, April 29, 2019 2:01 PM
To: tbehenna@aol.com
Subject: Granite City Electric Trademark Applications
Application to Register NIGHT TRAIN, Serial No. 88299539
Application to Register GCE NIGHT TRAIN, Serial No. 88299970
Application to Register GCE NIGHT TRAIN DEPOT, Serial No. 88302807
Dear Mr. Behenna:
I am the examining attorney assigned to the above-referenced trademark applications. I have reviewed the applications and there are several issues that must be addressed before they can be approved for publication. These issues can be addressed via examiner’s amendments.
First, the marks include the term “TRAIN.” However, it appears that applicant provides its services via truck. Therefore, to avoid any descriptiveness issues I propose amending the identification of services to add the wording “all of the foregoing excluding distribution or delivery by train.” Please let me know if the amendment is acceptable.
Second, the term “NIGHT” is merely descriptive of the fact that the services are provided overnight so this term should be disclaimed in all three marks. Also, the term “DEPOT” in the ‘807 application is descriptive and should be disclaimed. The term “depot” is descriptive of warehousing services, as it is defined as “A place for the storage of large quantities of equipment, food, or some other commodity.” See http://en.oxforddictionaries.com/definition/us/depot. The disclaimers would read as follows:
‘539 and ‘970 applications: No claim is made to the exclusive right to use “NIGHT” apart from the mark as shown.
‘807 application: No claim is made to the exclusive right to use “NIGHT” and “DEPOT” apart from the mark as shown.
Please let me know if the foregoing changes are acceptable. Once the foregoing is finalized I can enter the changes for you via examiner’s amendments.
Please let me know if you have any questions.
Sincerely,
Bill Jackson
William D. Jackson
Attorney Advisor – Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064