Notation to File

CORRECTED NOTE TO THE FILE

---

SERIAL NUMBER:            88336676

DATE:                                05/29/2019

NAME:                               nkenealy

NOTE:         

Searched:                                                             
 X   Google                            
 X   Lexis/Nexis                       
 X   OneLook
 X   Wikipedia
 X   Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
 X   Geographic significance          
 X   Surname                          
 X   Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued PRIORITY ACTION

        PRINT        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:

     OTHER:

 

 

From: Rosaya, Lisa W. [mailto:Lisa.Rosaya@bakermckenzie.com]
Sent: Friday, May 24, 2019 12:11 PM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Cc: GIPSCOfficeSupport <gipscofficesupport@bakermckenzie.com>; NYCTrademarks <NYCTrademarks@bakermckenzie.com>
Subject: RE: Trademark Application Serial No. 88336676 (KLOOK) – Possible Examiner’s Amendment followed by Suspension

 

Dear Natalie,

 

Thanks for your email.  We are conferring with our client and will get back to you as soon as we can.

 

Best,

Lisa

 

Lisa W. Rosaya
Partner, Intellectual Property
Baker & McKenzie LLP • 452 Fifth Avenue • New York, NY 10018 • United States
Tel: +1 212 626 4557 • Fax: +1 212 310 1659 • lisa.rosaya@bakermckenzie.com

 

10 YEARS – BAND 1 FOR IP   

CHAMBERS GLOBAL – 2009 TO 2018

 

bakermckenzie.com | LinkedIn | Twitter

 

 

 

This message may contain confidential and privileged information. If it has been sent to you in error, please reply to advise the sender of the error and then immediately delete this message. Please visit www.bakermckenzie.com/disclaimers for other important information concerning this message.

 

From: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Sent: Friday, May 24, 2019 9:23 AM
To: Rosaya, Lisa W. <Lisa.Rosaya@bakermckenzie.com>
Cc: NYCTrademarks <NYCTrademarks@bakermckenzie.com>
Subject: [EXTERNAL] Trademark Application Serial No. 88336676 (KLOOK) – Possible Examiner’s Amendment followed by Suspension
Importance: High

 

Dear Ms. Rosaya,

 

I am the assigned trademark examining attorney for the above-referenced application.  As I mentioned in the my voicemail this morning, there are a few issues with the identification of goods and services that I think we can resolve in an examiner’s amendment and then suspend the application pending the foreign registration.  Classes 9, 36, 42, and 45 are definite and do not require amendment.  Below please find my suggestions for Classes 35, 39, 41 and 43.  For the most part it is simply a matter of moving items between classes and clarifying language to render the wording definite as reservations services are classified with the item for which the reservation is being made, e.g., transportation reservations are in Class 39, entertainment reservations are in Class 41 and dining and hotel reservation services are in Class 43.  Strikethrough and [bracketed] wording below indicates wording that would be deleted from the identification and bold indicates wording that I recommend adding. 

 

Class 35:  Marketing services; promotional services in the nature of {applicant must specify the specific nature of the services, e.g., promoting the goods and services of others}; providing information in the nature of price comparison information and comparative ratings and rankings of airline flights, hotels and temporary accommodations; arranging and conducting customer loyalty and incentive reward programs to promote the sale of travel, transportation, entertainment and activities, and accommodations; arranging and conducting affinity and incentive award in the nature of affinity programs to promote travel and the sale of travel-related products and services of others for commercial, promotional and advertising purposes; customer club services for commercial, promotional and advertising purposes; promoting the sale of charge and credit card accounts of others through the administration of incentive award programs; incentive award programs to promote the sale of products and services of others and customer clubs for commercial promotion and for advertising purposes; business consulting services; business consulting services in the field of travel and travel planning; providing airfare price comparison information; advertising services; promoting and marketing the goods and services of others via electronic communication networks; design and implementation of marketing and promotional programs for others in the field of travel; promotion and marketing services in the field of travel; providing consumer reviews, ratings, and recommendations relating to transportation and travel service providers[from Class 39];

 

Class 39:  Travel information services; travel booking agencies; travel services, namely, making reservations and bookings for transportation, entertainment and activities, and accommodations travel information services; providing travel information services on travel activities for entertainment and travel accommodations; transportation information services; travel agency services, namely, making reservations and bookings for transportation; providing information, news and reviews of travel service providers concerning travel; providing a website and website links to travel information, geographic information, maps, map images, and trip routing; organizing and arranging travel activities namely, organizing and arranging transportation for tours, travel to events and travel to attractions; making reservations for transportation for travel tours to travel to events and to travel to attractions; providing information about tour transportation and travel to events and attractions; organizing transportation for sight-seeing tours; travel and tour transportation information services; travel and tour transportation ticket reservation services; arranging bookings of day trips and sight-seeing tours, namely, arranging transport for travellers; providing reviews of travel service providers; travel agency services, namely, making reservations and bookings for transportation, airlines, trains, rental cars, cruises; providing consumer reviews, ratings, and recommendations relating to transportation and travel service providers; providing information about transportation and travel

 

Class 41:  Providing entertainment information and making and arranging for ticket reservations and bookings for shows and other entertainment events; providing online newsletters in the fields of travel, travel planning, travel and entertainment news, maps, city directories and listings; providing information in the field of entertainment; publishing of reviews; blogs and online non-downloadable journals in the fields of travel, entertainment, hotels, restaurants, and tourism; entertainment and education services, namely, ongoing television programs and non-downloadable videos featuring travel information, recommendations, news and features on all aspects of travel and travel-related topics; providing a website featuring non-downloadable videos and images in the field of travel; arranging guided travel tours of {applicant must specify what is being toured, e.g., indicate facility, e.g., a museum, an historical site, a winery}; [after this are services moved from Class 39] travel services, namely, making reservations and bookings for entertainment, sporting and cultural activities, and accommodations travel information services; providing travel information services on travel activities for entertainment; travel agency services, namely, making reservations and bookings for entertainment, sporting and cultural activities;

 

Class 43:  Travel agency services, namely, making reservations and bookings for hotels, temporary accommodations, activities[reads on 41], and restaurants and meals; providing temporary accommodation information; providing consumer reviews, ratings, rankings and recommendations relating to restaurants, hotels and temporary accommodations; providing information in the field of reservations and bookings for hotels and temporary lodging for travelers; [after this are services moved from 39] travel services, namely, making reservations and bookings for accommodations; Providing information in the field of temporary accommodations for travelers; providing travel information services on travel activities for travel accommodations; travel agency services, namely, making reservations and bookings for temporary lodging, restaurants and meals;

 

I also suggest amending the description of the mark to match the description in the applicant’s other application:

 

he mark consists of the word "KLOOK" in a stylized font wherein the "OO" are connected.

 

Please let me know by phone or email if I may correct the above through an examiner's amendment or if you would like to discuss these issues.  If I do not hear from you by Tuesday, May 28, 2019, I will simply send an Office action to address these issues.

 

Kind Regards,

 

Natalie L. Kenealy

Trademark Examining Attorney

Law Office 104

571-272-7817

 

 

         Sent to TICRS as Serial Number: 88336676