NOTE TO THE FILE
SERIAL NUMBER: 88324824
DATE: 03/03/2020
NAME: areeves
NOTE:
From: Reeves, April
Sent: Tuesday, March 3, 2020 10:40 AM
To: Rothrock, Lindsey <LRothrock@taftlaw.com>
Subject: RE: Question Regarding Serial No. 88324824 for GOAL & Design
Hi Lindsey,
Your proposed amendment is not acceptable because it is not within the scope of legal representation. The original language in Class 45 is definite and properly classified. It closely mirrors this entry from the ID Manual:
Attorney services, namely, representation of clients in {indicate the subject of the legal matters, e.g., tax, federal trademark, family law, etc.} matters
Your proposed amendment encompasses activities that are associated with legal representation services, but are not a narrower form of legal representation. Rather, if offered as a services, these activities could be financial services in Class 36 or office support staff services in Class 35.
As another example, although restaurants commonly clean up after patrons, an applicant who came in for “restaurant services” in Class 43 would not be allowed to amend to “cleaning of commercial premises” in Class 37 because cleaning is not a narrower form of restaurant services. Rather, cleaning is an ancillary activity performed in the course of provided restaurant services. Allowing an applicant to amend from “restaurant services” to any kind of “cleaning” service would not give third parties proper notice of the services in the application.
If your applicant is not providing legal representation services and does not intend to provide these services, the services can be delete from the application.
Hope that helps.
Best,
April
April E. Reeves
Trademark Examining Attorney
Law Office 124
(571) 272-3681
From: Rothrock, Lindsey <LRothrock@taftlaw.com>
Sent: Monday, March 2, 2020 12:08 PM
To: Reeves, April <April.Reeves@USPTO.GOV>
Subject: Question Regarding Serial No. 88324824 for GOAL & Design
Dear April,
I hope that you are doing well.
I am the attorney of record for the above-referenced application.
In your December 17, 2019 office action, you did not accept Applicant’s proposed amendments to the Class 45 services, which were amended to the following:
· Class 45: Legal document preparation and support services, namely, representation of clients in securities class action lawsuits in the nature of notifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claims
You found that the above amendment exceeded the scope of the original identification, stating that “document preparation and support” services were not an umbrella category of legal representation of clients, and that “notifying, processing, submitting, tracking, and reporting” are not types of legal representation services.
When identifying Applicant’s legal-related services, Applicant used the language “representation of clients” to describe broadly how Applicant assists clients in connection with legal proceedings, i.e., how Applicant oversees and does certain work on behalf of its clients. As shown in Applicant’s specimens of use, such work involves notifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claims.
Applicant certainly wants to ensure that its identifications of services clearly and accurately describe its services. Thus, if the language “representation of clients” is too broad to accurately describe Applicant’s services, would the following, narrower language be acceptable to better describe Applicant’s services, as shown in Applicant’s specimens of use:
· Class 45: Legal document preparation and support services, namely,
representation of clients in securities class action lawsuitsnotifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claims in securities class action lawsuits
Thank you very much for your consideration, and I am happy to discuss this in further detail.
Best,
Lindsey
Taft
/
Lindsey N. Rothrock
Attorney
LRothrock@taftlaw.com
Dir: 317.713.9442
Tel: 317.713.3500 | Fax: 317.713.3699
One Indiana Square, Suite 3500
Indianapolis, Indiana 46204-2023
This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments.