NOTE TO THE FILE
SERIAL NUMBER: 88355947
DATE: 02/06/2020
NAME: exu
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:
X 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: Lee Cheng <lcheng@chenglawgroup.com>
Sent: Wednesday, January 29, 2020 4:14 PM
To: Xu, Elaine <Elaine.Xu@USPTO.GOV>
Subject: Re: United States Trademark Application Serial No. 88355947 / Docket No. (“HRT”)
Via Email Only
This email is intended for Ms. Elaine Xu.
United States Trademark Application Serial No. 88355947 / Docket No. (“HRT”)
Dear Ms. Xu
In accordance with your request, here are my response comments with regard to the two remaining outstanding issues of the present application.
1. You indicated in your email below that the evidence we submitted to support our amendment to "limited company" as the entity type is insufficient since the name shown on the evidence is different from the name in our application. However, we respectfully disagree with your conclusions in this regard.
The owner's name on the present application is "ISHIZUKA GLASS KABUSHIKI KAISHA" while the name on the evidence is "ISHIZUKA GLASS CO., LTD." The differences between the two names that you have noted in your email are not actual differences. "KABUSHIKI KAISHA" is a transliteration of the japanese word "株式会社". According to wikipedia (see attached excerpt from http://en.wikipedia.org/wiki/Kabushiki_gaisha), "[m]any Japanese companies translate the phrase "株式会社" in their name as "Co., Ltd." Thus, the name "ISHIZUKA GLASS CO., LTD." shown on the evidence is equivalent to the name "ISHIZUKA GLASS KABUSHIKI KAISHA" shown on the application.
It is important to note that our client's corporate name in the United States is "ISHIZUKA GLASS CO., LTD.," and that the company operates in the United States as a limited company under the corporate name of "ISHIZUKA GLASS CO., LTD." (as reflected in the evidence). The Trademark Office is not justified in requiring the owner of this application, ISHIZUKA GLASS KABUSHIKI KAISHA to list its entity type as a Joint Stock Company when such entity type does not accurately represent ISHIZUKA GLASS CO., LTD.'s business practice. The Trademark Office records should accurately reflect the business entity of ISHIZUKA GLASS CO., LTD. in U.S. practice. Thus, the Trademark Office should accept Applicant's amendment of the entity type to "Limited Company."
2. With regard to the specimen filed December 8, 2019, Applicant submitted an updated specimen on January 14, 2020. Applicant believes that the updated specimen filed January 14, 2020 is acceptable under Section 904.03 of the TMEP since the updated specimen (1) shows the trademark "HRT" being used with the goods (i.e. glass mug) listed in our application, (2) accurately depicts the trademark "HRT" shown in the application, (3) shows the actual use of the trademark "HRT" in commerce (i.e label attached to a glass mug which is sold with another product), and (4) shows the trademark "HRT" being prominently displayed within parenthesis and in distinct all capital English letters surrounded by Japanese text. Thus, given these qualifications, Applicant believes that the updated specimen on January 14, 2020 should be accepted by the Trademark Office in support of the present application.
If you have any questions or wish further discussion regarding the above, please contact me via email or at 202-552-9635 at your earliest convenience.
With best regards,
Lee Cheng
Lee Cheng, EsqCheng Law Group PLLC1133 13th Street, N.W., Suite C2Washington D.C. 20005Tel: (202) 530-1280Fax: (202) 530-1281lcheng@chenglawgroup.comCONFIDENTIAL AND PRIVILEGED INFORMATION IMPORTANT: The enclosed message and any attachments are intended for the addressee only and are privileged and confidential. If you are not the addressee, then please DO NOT read, copy or distribute the message or any attachment. Please reply to the sender that you received the message in error and delete it. Thank you.On 1/11/2020 1:08 PM, Xu, Elaine wrote:
This email is intended for Lee Cheng and/or any authorized party
United States Trademark Application Serial No. 88355947 / Docket No. (“HRT”)
Dear Lee,
I am the assigned trademark examining attorney for the above-referenced application. As of now there are 2 outstanding issues with the application upon reviewing the application:
1) You amended to limited company as the entity type. However, the name in the sheet you submitted as evidence to support that limited company is proper is different from the name in the application.
2) Upon further review, the specimen could be perceived to show a plastic dish for storing things. I would recommend submitting an updated specimen clearly showing the applied-for mark in use in commerce with a glass bowl or glass mug.
If the changes below are acceptable, I will issue an examiner's amendment / priority action with the specimen issue being the only remaining outstanding issue:
1) Applicant has clarified its entity type for the record by specifying that it is a joint stock company. See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.
Please let me know by phone or email how you would like to proceed or if you have any questions about the application as soon as possible.
Kind regards,
Elaine Xu
Trademark Examining Attorney
Law Office 128
(571) 270-5297