Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88341475

DATE:                                06/03/2019

NAME:                               bsarpu

NOTE:         

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

Checked:                                                             
     Geographic significance          
     Surname                          
     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           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        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: Alan Kamrath [mailto:Alan@thelawfirm.cc]
Sent: Wednesday, May 29, 2019 10:06 PM
To: McCarthy, Bridget <Bridget.McCarthy@USPTO.GOV>
Subject: USPTO Correspondence Ser. Nos. 88341475 & 88339634; TEN SQUARE

 

Examiner McCarthy:

 

In proposed ID, please add “baby toys, baby blankets, and baby play yards” instead of first brackets and “women’s clothing” instead of second brackets.

 

Mark descriptions are acceptable.

 

Please proceed by examiner’s amendment.

 

Please contact me if you have questions or if I can be of further assistance.  

From: McCarthy, Bridget [mailto:Bridget.McCarthy@USPTO.GOV]
Sent: Monday, May 27, 2019 9:40 AM
To: Alan Kamrath <Alan@thelawfirm.cc>
Cc: docket@mwpatentlaw.com
Subject: USPTO Correspondence Ser. Nos. 88341475 & 88339634; TEN SQUARE

 

Good morning Alan,

 

I am the trademark examining attorney assigned to the above-pending trademark applications.  I have completed my initial examination and there are some minor issues with the application that I am hoping we can resolve via Examiner’s Amendment. 

 

For Application Ser. No. 88341475, there is a portion of the identification of services that need some clarification.  The entry “Operating an on-line shopping site in the field of toys, baby products and women's products”  needs some clarification as to what type of baby products and women’s products the applicant is providing.  This wording needs slight clarification because these products could include anything from furniture, to clothing, to toys, etc.  For Section 2(d) analysis purposes, we need to know what types of “products” the applicant plans to sell.  Thus, I propose the following:

 

Advertising by mail order; Auction services; Consulting services, namely, providing expectant parents with consumer information on all types of baby products and services; Import-export agency services; On-line retail consignment stores featuring toys; On-line auction services; Operating an on-line shopping site in the field of toys, baby products, namely, {specify the types of products, e.g., baby toys, baby blankets, etc.} and women's products, namely, {specify products, e.g. women's clothing}; Providing television home shopping services in the field of general consumer merchandise

 

 

For both Ser. Nos. ‘475 and ‘634, we need some amendments to the mark descriptions and color claims.  Herein, the mark descriptions and drawings discuss the color white, however, this color is not claimed as part of the color claim.  Also, it appears on the drawing that the square that “TEN SQUARE” wording is found in is outlined in gray, so we also need to claim this color and amend the description appropriately.  I also amended the description of the mark to simplify it a bit so that if someone did not have the drawing in front of them they would be able to at least picture the drawing based on the description.  Thus, I propose the following for both applications:

 

The mark consists of the stylized wording "TEN SQUARE" in blue font on a white square outlined in gray.  The white square is superimposed on an additional square with rounded edges, where the second square is shown to have a white diamond center and the top left corner of the second square and bottom right corner of the second square is colored blue and the bottom left corner and top right corner of the second square is colored pink.

 

The color(s) white, gray, blue and pink is/are claimed as a feature of the mark

 

If this is acceptable, please let me know and I can amend the record accordingly via an Examiner’s Amendment.  I do need to hear back from you by the end of the week or I will have to issue an Office Action requiring the above.  If you have any questions, please let me know.

 

Best,

 

Bridget

__________________________________

Bridget A. McCarthy, Esq.

Examining Attorney, Law Office 125

United States Patent and Trademark Office

(571)272-3223

bridget.mccarthy@uspto.gov