NOTE TO THE FILE
SERIAL NUMBER: 88348959
DATE: 12/05/2019
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 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: Ray Ashburg <ray.ashburg@electrolux.com>
Sent: Wednesday, December 4, 2019 1:21 PM
To: Painter, Valeriya <Valeriya.Painter@USPTO.GOV>
Cc: Nadia Candeo <nadia.candeo@electrolux.com>; Trademark <trademark@electrolux.se>
Subject: RE: ATTENTION REQUESTED: TM Application for WHAT2EAT in Serial No. 88348959
Thanks for the email. The proposed amendments are acceptable to the Applicant. I would appreciate it if you enter an Examiner amendment as outlined below.
Regards,
Ray Ashburg, Associate General Counsel – IP
Legal Department
10200 David Taylor Drive
Charlotte, NC 28262
Phone: 980.236.2391
Mobile: 704.458.1466
Fax: 704.547.7053
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From: Painter, Valeriya
Sent: Monday, December 2, 2019 10:34 AM
To: ray.ashburg@electrolux.com
Subject: ATTENTION REQUESTED: TM Application for WHAT2EAT in Serial No. 88348959
Importance: High
Dear Mr. Ashburg,
Hope you had a lovely holiday weekend.
I am the trademark examining attorney handling U.S. Trademark Application for WHAT2EAT in Serial No. 88348959. I am going to withdraw the descriptiveness refusal based on your response in this case. However, some issues with the identification of goods and services remain. They are as follows:
In International Class 9, the wording “applications for allowing users to create, share and comment about … food and beverage” is indefinite because it is not clear how the software enables users to create or share food or beverage. Applicant must clarify software functionality with respect to food and beverages. Applicant may adopt the following, if accurate:
Class 9: Downloadable mobile applications for allowing users to create, share and comment about food and beverage recipes, and to provide information about foods and beverages; Downloadable mobile applications for providing information, text, audio and video content in the fields of recipes, food and beverage; downloadable computer application software for mobile phones and handheld computers, namely, software for guiding users, step-by-step, through recipes based on inventory; downloadable computer software application for mobile phones featuring recipes and information in the fields of food, cooking, wine, beverages, entertaining, allergies, and nutrition; downloadable computer application software for mobile devices featuring recipes organized by dish, ingredients or prep time
Services in Classes 35, 41 are acceptable as is.
In International Class 42, software must be clarified as “non-downloadable.” Further, the entry “creating an online community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking” is largely duplicated and already appears in Class 42. Applicant may adopt the following wording:
Class 42: Computer software development in the field of mobile applications; Software development and product development in the field of recipes, food and beverage; Creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; Providing a web site featuring technology that enables users to access a computer database of information in the fields of recipes, food and beverage; Providing a website featuring a search engine for recipes; Providing a website featuring resources, namely, a website featuring primarily non-downloadable software for recipe sharing and management, nutrition and meal planning and also featuring non-downloadable publications in the nature of recipes in the field of cooking; Providing a website featuring technology that enables users to manage and share their cooking recipes;
Computer services, namely, creating an online community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking;Providing a website featuring non-downloadable software that enables users to post ratings, reviews, and recommendations in the field of recipes, foods, cooking, wine, beverages, food allergies and nutrition tips and information in cooking, food, and wine
In International Class 43, the original wording was “Providing online databases and websites where users can post ratings, reviews, and recommendations featuring recipes, foods, cooking, wine, beverages, food allergies and nutrition tips and information in cooking, and food and wine.” The wording as amended remains indefinite and overbroad. The suggested wording “posted by users for culinary appreciation purposes” was important to add in this case to clarify that this service focuses on information about food and wine characteristics and qualities and is not done for consumer information purposes, which would be more appropriately classified in Class 35. For example, “Providing a website featuring the ratings, reviews and recommendations posted by consumers on restaurants, food and wine for commercial purposes” is in Class 35 where as “Providing a web site featuring the ratings, reviews and recommendations on wines for wine appreciation purposes posted by viewers” is in Class 43.
Notably, the application already now covers “Providing on-line interactive databases featuring information about food, wine, beverages, and kitchenware products and cooking equipment and accessories for advertising and sales purposes” in Class 35.
Applicant may adopt the following wording in Class 43:
Class 43: Providing online databases and websites featuring ratings, reviews, and recommendations for recipes, foods, cooking, wine, and beverages, and information about cooking, food and wine, all for culinary appreciation purposes posted by users; Providing on-line interactive databases featuring information about
in the fields ofcooking,food, wine, beverages,baking, ingredients, and recipes, kitchenware, cooking equipment and accessories
Please advise at your earliest convenience how you wish to proceed and I can enter these amendments for you by Examiner’s amendment. If it would help, I would be happy to discuss via the phone to arrive at mutually agreeable alternatives.
Best regards,
/Valeriya S. Painter/
Trademark Attorney Advisor, Law Office 121
United States Patent and Trademark Office
(571) 270-7132
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