NOTE TO THE FILE
SERIAL NUMBER: 88348494
DATE: 06/05/2019
NAME: nranns
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:X OTHER:
From: Tracey Sherpinskas [mailto:tsherpin@ait.com]
Sent: Wednesday, June 05, 2019 10:21 AM
To: Ranns, Nathan <Nathan.Ranns@USPTO.GOV>; legal@ait.com; cmo@ait.com; controller@ait.com
Subject: RE: U.S. Trademark Application Serial No. 88348494 - ADVANCED INTERNET TECHNOLOGIES - Examiner's Amendment
Importance: High
Mr. Ranns,
I apologize for missing your call yesterday.
The applicant consents to both. Please proceed.
Thank you,
Tracey Sherpinskas (NCBL #43197)
Advanced Internet Technologies, Inc.
421 Maiden Lane
Fayetteville, NC 28301
910.222.4466
From: Ranns, Nathan [mailto:Nathan.Ranns@USPTO.gov]
Sent: Tuesday, June 04, 2019 3:35 PM
To: legal@ait.com; tsherpin@ait.com; cmo@ait.com; controller@ait.com
Subject: RE: U.S. Trademark Application Serial No. 88348494 - ADVANCED INTERNET TECHNOLOGIES - Examiner's Amendment
Dear Ms. Sherpinskas,
I sincerely apologize for sending multiple emails, but I forgot to include that applicant must also agree to disclaim the wording “INTERNET TECHNOLOGIES” as generic of the claimed services on the Supplemental Register. This practice is consistent with applicant’s mark in U.S. Registration No. 2722755.
Please do not hesitate to reach out should you have any questions.
Kind Regards,
Nathan C. Ranns
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 128
Phone: (571) 270-3776
From: Ranns, Nathan
Sent: Tuesday, June 04, 2019 3:33 PM
To: legal@ait.com; tsherpin@ait.com; cmo@ait.com; controller@ait.com
Subject: U.S. Trademark Application Serial No. 88348494 - ADVANCED INTERNET TECHNOLOGIES - Examiner's Amendment
This email is intended for Tracey Sherpinskas and/or any authorized party
U.S. Trademark Application Serial No. 88348494
Dear Ms. Sherpinskas,
I am the trademark examining attorney assigned to the above-captioned application. I am writing to follow up on the voicemail I left you yesterday, June 3, 2019. The application will be ready to move forward once applicant agrees to amend this application to seek registration on the Supplemental Register as the entire mark is descriptive for the applicant’s services.
Applicant has previously registered a mark with identical wording on the Supplemental Register – namely, U.S. Registration No. 2722755 (ADVANCED INTERNET TECHNOLOGIES). Applicant has also disclaimed the wording as descriptive in similarly worded marks – namely, U.S. Registration Nos. 2631340 and 2749444 (ADVANCED INTERNET TECHNOLOGIES & COMMUNICATIONS).
If applicant agrees to amend this registration to the Supplemental Register, I can make that change via Examiner’s Amendment. Otherwise, I will issue a formal Office Action refusing registration pursuant to Trademark Act Section 2(e)(1).
Please let me know as soon as possible if applicant agrees to seek registration of this mark on the Supplemental Register. If I do not hear from you by 5:00 PM Eastern on Friday, June 7, 2019, I will issue the formal Office Action.
Please kindly confirm receipt of this email.
Best Regards,
Nathan C. Ranns
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 128
Phone: (571) 270-3776