NOTE TO THE FILE
SERIAL NUMBER: 88337801
DATE: 07/09/2019
NAME: jmarino
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 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 Elle,
Thank you so much for outlining and for the revisions:
1. Yes. Please keep disclaimer “RACING LEAGUE” and thank you for the clarification on supplemental registry. Approved. Please amend.
2. Thank you for cleaning up the description. Approved. Please amend.
3. OK. Once that step is in place we will submit specimen to show use be acceptable in terms of website with services outlined? Approve Priority Action so we can submit.
Apologies for these minor corrections and thank you for making it streamlined for us to clean up and amend.
Very Grateful,
Justin Havlik
On Jun 24, 2019, at 8:39 AM, Marino, Elle <Elle.Marino@uspto.gov> wrote:Hi Justin,
I have received and reviewed your response to the office action and allegation of use. There are just a few small issues left to work out before we can move the application forward.
1. Descriptive Refusal – I see that you have disclaimed all of the wording in the mark. Technically, we cannot disclaim an entire mark – the only appropriate way to obviate this Refusal is to amend to the Supplemental Register (and we will keep the disclaimer of “RACING LEAGUE.” You are now able to go on the Supplemental Register because you filed the allegation of use. So, with your permission, I can amend this application to the Supplemental Register via Examiner’s Amendment and drop the Trademark Act Section 2(e)(1) Merely Descriptive Refusal.
2. Identification – I see your newly amended identification and I just need to clean it up a little bit to more definitely define the services in compliance with our ID manual. If accurate, the following is recommended:
International Class 041: Entertainment services in the nature of
providingprofessional athletes competing in electric skateboard racing events, competitions and tournaments
If that amendment is acceptable to you, I can also enter this on my end via Examiner’s Amendment.
3. Specimen showing use – While I can make the changes to 1 and 2 on my end via Examiner’s Amendment, I will need to send out what is called a Priority Action for the specimen. I have to refuse the specimen because it does not show use in commerce. Here, the specimen is merely just the wording in the mark. We need to see an example of this wording in relation to something about the services, e.g., a picture of the mark at an actual event, a picture of the mark on a page that describes these events, etc. When I issue the Priority Action you will be able to fix this issue by simply submitting a new specimen that shows use.
So, let me know if you approve of 1 (amendment to the Supplemental Register) and 2 (amendment to the identification of services). If so, I can easily make those changes on my end via an Examiner’s Amendment and also issue a Priority Action so that you can send in an new specimen. Thank you!