NOTE TO THE FILE
SERIAL NUMBER: 88318489
DATE: 05/21/2019
NAME: jmason3
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:Hi,
We agree to the suggested changes. Thanks for proceeding via Examiner’s Amendment.
Regards,
Andrew A. Gonzalez, Esq.
Gonzalez & Oberlander LLP
18 E 41st Street, 6 Fl
New York, NY 10017
212-587-7977 (o)
212-587-7955 (f)
On May 20, 2019, at 4:20 PM, Mason, Jared <Jared.Mason@uspto.gov> wrote:Dear Mr. Gonzalez:
It was a pleasure speaking with you today regarding your application for PROJECT GATEWAY PREPARATION PERFORMANCE PREEMINENCE (Serial #88318489). Below are the requirements I discussed with you today by phone.
Color Claim & Description of the Mark
The color claim and the description of the mark are incomplete and will need to be amended. The description refers to the wording as being in “standard typeface in initial caps” when in reality it is in stylized font. In addition, the description will need to be clarified that the blue line in the mark is horizontal and is the color grey, that the red wheel referenced in the description is really a red cog, and it is surrounded by a blue semicircle instead of a full circle. The Office requires that the description be complete and describe all detailing in the mark. Please advise if you agree to the following statements being added to the record, if accurate, changes are shown in bold:
The colors red, blue, white, and grey are claimed as a feature of the mark.
The mark consists of the wording “PROJECT GATEWAY” in large size blue stylized font; directly underneath are the words “PREPARATION PERFORMANCE PREEMINENCE” in small size red stylized font with each word separated with a blue triangle; above is a horizontal grey line with a small design of a cog colored in red with a larger blue semicircle around it with five human figureheads in the color blue; all on a white background
Disclaimer Required
The mark contains the word “PROJECT” and must be disclaimed as it is descriptive of a characteristic of applicant’s services. Specifically, applicant’s identification in both classes explicitly provides that the services include educational, informational, and entertainment services surrounding “project execution” in the engineering, procurement, and construction industies. Therefore, the wording “PROJECT” describes a characteristic of applicant’s services because it identifies a central subject matter of all of the services.
The Office does not permit applicants to claim exclusive rights to descriptive terms in order to prevent the inhibition of competition, while also maintaining the freedom of the public to use these terms. Please advise if you agree to the following statement being added to the record:
No claim is made to the exclusive right to use “PROJECT” apart from the mark as shown.
Option to Remove Color
As noted above, applicant has claimed the color “white,” but the only place where white appears in the mark description is in reference to the “white background.” Although accurate, applicant may delete white from the color claim and “all on a white background” from the mark description, but it is not mandatory. If applicant does not request deletion of the above, the Office will assume applicant wishes to continue with white claimed as a feature of the mark.
If you agree to the suggested changes above, I can enter them for you by way of Examiner’s Amendment, and your application may proceed towards registration. Thank you for your attention to this matter. Should you have any questions, do not hesitate to contact me.
Sincerely,
Jared M. Mason
Trademark Examining Attorney
Law Office 119
(571) 272-4146