NOTE TO THE FILE
SERIAL NUMBER: 88354574
DATE: 06/10/2019
NAME: akeeley
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: Stevens, Eric [mailto:EStevens@poynerspruill.com]
Sent: Monday, June 10, 2019 11:29 AM
To: Keeley, Alison <Alison.Keeley@USPTO.GOV>
Subject: RE: Trademark Application No. 88354574 GP
Perfect. Thank you.
From: Keeley, Alison [mailto:Alison.Keeley@USPTO.GOV]
Sent: Monday, June 10, 2019 11:28 AM
To: Stevens, Eric <EStevens@poynerspruill.com>
Subject: RE: Trademark Application No. 88354574 GP
Dear Mr. Stevens,
I will send a Examiner’s Amendment/Priority Action, leaving Class 38 inactive, so you can pay the fee in the Response.
Please let me know if you have any questions.
Thank you,
Alison Keeley
/Alison Keeley/
Trademark Examining Attorney
Law Office 113
(571) 272-4514
Please note: All relevant e-mail communications may be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Stevens, Eric [mailto:EStevens@poynerspruill.com]
Sent: Monday, June 10, 2019 9:03 AM
To: Keeley, Alison <Alison.Keeley@USPTO.GOV>
Subject: RE: Trademark Application No. 88354574 GP
Good morning Ms. Keeley,
Thank you for your email regarding the above-referenced application. My client agrees to your proposed amended identification for each class set forth in your email, including the proposed added Class 39. We will arrange for payment of the additional fee for the Class 39 services. Will you send a Priority Action or something to that effect so we can pay the fee in a response?
Thank you.
Eric P. Stevens | Partner
301 Fayetteville Street, Suite 1900, Raleigh, NC 27601
PO Box 1801, Raleigh NC 27602-1801
D: 919 783 1017 | M: 919 455 5635
estevens@poynerspruill.com | www.poynerspruill.com
From: Keeley, Alison [mailto:Alison.Keeley@USPTO.GOV]
Sent: Thursday, June 06, 2019 10:22 AM
To: Stevens, Eric <EStevens@poynerspruill.com>
Subject: Trademark Application No. 88354574 GP
This email is intended for Eric Stevens and/or any other authorized attorney.
Trademark Application No. 88354574 GP
Dear Mr. Stevens,
I am the trademark examiner assigned to this application. I have reviewed the application and have identified some issues that can potentially be resolved by Examiner’s Amendment. The specific issues are set forth below.
Identification
The wording in Class 35 contains “Retail dealerships featuring heavy equipment and industrial equipment for use in building construction, …, buses; and trailers”. The use of the semicolon here creates an ambiguity because semicolons are generally used on separate identifications, and so it is not clear if the trailers are simply another good featured in the dealership or are a separate good (which would be a Class 12 good). I would propose amending the semicolon to a comma.
The wording “Leasing of heavy equipment and industrial equipment for use in building construction, mining, earth and materials handling and moving, road building and paving, construction of utilities, pipe laying, and timber harvesting, power operated forklifts and other lifting and moving equipment, floor cleaning machines, road sweeping machines” is overly-broad and indefinite. Specifically, the leasing of machines is classified based on the function of the machine.
However, here, the identification includes rental of “power operated forklifts and other lifting and moving equipment which is a Class 39 service, “timber harvesting”, a Class 40 service, and the vague wording “earth and materials handling and moving”. Which includes “earth moving”, a class 37 service, but also “materials handling”, which could include materials treatment equipment in Class 40. Therefore, this wording must be clarified. As this potentially includes wording outside of the identified Classes, if I send an Office Action, I will also require Clarification as to the number of Classes. If you wish to add Class 39, an additional fee will be required.
The wording “Leasing of waste handling equipment” in Class 40 is also overly-broad and indefinite because “waste handling equipment” could encompass functions such as “waste treatment” in Class 40, but also “waste transportation” in Class 39. Again, this must be clarified, and if wording is added in Class 39, an additional fee will be required.
The following amended Identification is suggested, if accurate (this proposed Amendment does not include adding additional Classes, but Class 39 may be added as discussed above. I can add the class and keep it inactive pending the payment of the relevant fee).
Class 35: Retail dealerships featuring heavy equipment and industrial equipment for use in building construction, mining, earth and materials handling and moving, road building and paving, agriculture, utilities, waste handling, pipe laying, and timber harvesting, power operated forklifts and other lifting and moving equipment, floor cleaning machines, road sweeping machines, diesel and electric generators, switchgears, marine vessel engines, on-highway trucks, buses, and trailers
Class 37: Repair and maintenance of heavy equipment and industrial equipment for use in building construction, mining, earth and materials handling and moving, road building and paving, agriculture, utilities, waste handling, pipe laying, and timber harvesting, power operated forklifts and other lifting and moving equipment, floor cleaning machines, road sweeping machines, diesel and electric generators, switchgears, marine vessel engines, on-highway trucks, buses, and trailers; Leasing of heavy equipment and industrial equipment for use in building construction, mining, earth
and materials handling andmoving, road building and paving, construction of utilities, pipe laying,and timber harvesting, power operated forklifts and other lifting and moving equipment,floor cleaning machines, and road sweeping machines
Class 40: Leasing of waste handling equipment in the nature of machines for waste treatment; leasing of diesel powered electric generators and switchgears for the production of electricity; Leasing of heavy equipment and industrial equipment for use in timber harvesting
Additionally, if Class 39 is added, the following may be added:
Class 39: Leasing of forklifts and moving equipment, namely, pads, straps, hitches, dollies, boxes, carriers, and hand trucks
Please let me know by phone or email if this is acceptable or if you have any questions.
Thank you,
Alison Keeley
/Alison Keeley/
Trademark Examining Attorney
Law Office 113
(571) 272-4514
Please note: All relevant e-mail communications may be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
*********
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*********
This message constitutes a confidential attorney-client communication. If you have received this communication in error, do not read it. It is not intended for transmission to, or receipt by, any unauthorized persons. Please delete it from your system without copying it, and notify the sender by reply email or by calling 919-783-6400, so that our address record can be corrected. Thank you.