NOTE TO THE FILE
SERIAL NUMBER: 88342110
DATE: 05/28/2019
NAME: vsherman
NOTE:
Searched:
X Google
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:X OTHER:
From: Mike Paris [mailto:mparis@originww.com]
Sent: Tuesday, May 28, 2019 11:37 AM
To: Painter, Valeriya <Valeriya.Painter@USPTO.GOV>
Cc: Lynne P. Wittkamp <lwittkamp@originww.com>
Subject: RE: ATTENTION REQUESTED: TM APPLICATION SERIAL NO. 88342110 for IONOSITE
Dear Valeriya,
I agree and am amenable with the proposed change. Can you please enter them in as an examiner’s amendment on our behalf. Please let me know if you require any additional information.
Best Regards,
Michael Paris
Chief Operating Officer
Office: 609 250 6015
Mobile: 610-613-3138
Email: mparis@originww.com
ORIGIN INC.
2 Research Way, Third Floor, Princeton, NJ 08540
Main: 609-250-6000 Fax: 609 250 6001
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From: Painter, Valeriya <Valeriya.Painter@USPTO.GOV>
Sent: Tuesday, May 28, 2019 10:03 AM
To: Mike Paris <mparis@originww.com>
Subject: ATTENTION REQUESTED: TM APPLICATION SERIAL NO. 88342110 for IONOSITE
Importance: High
Dear Mr. Paris,
I am the examining attorney with the U.S. Patent and Trademark Office, handling your trademark application for the mark IONOSITE in Serial No. TM APPLICATION SERIAL NO. 88342110. In this case, the identification of goods contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Such is not the case here. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may for example adopt the following:
Class 5: Pharmaceutical preparations for the treatment of musculo-skeletal disorders; Therapeutic pharmaceutical for the treatment of rheumatoid arthritis; Therapeutic pharmaceutical for the treatment of digital arthritis; Therapeutic pharmaceutical for the treatment of deep tissue musculoskeletal ailments; Therapeutic pharmaceutical for the treatment of inflammation; Therapeutic pharmaceutical for the treatment of tendonitis; Therapeutic pharmaceutical for the treatment and prevention of tendon and muscle injuries and disorders
(as well as prevention); Therapeutic pharmaceutical for the treatment of sports related injuries; Therapeutic pharmaceutical for the treatment of knee cartilage regeneration
If you are amenable to these changes, I would be happy to enter them for you by examiner’s amendment. Please advise at your earliest convenience how you wish to proceed.
Thank you, and best regards,
/Valeriya S. Painter/
Trademark Attorney Advisor, Law Office 121
United States Patent and Trademark Office
(571) 270-7132
~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.