NOTE TO THE FILE
SERIAL NUMBER: 88362888
DATE: 03/23/2020
NAME: jhilliard
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:Hi Jessica,
Thank you for your email. The client agrees to amend the ID as you propose:
- Accessories for cameras and photographic apparatus and instruments, namely, battery packs, battery chargers, flashes, hoods, shutters,
handles, tripods, monopods, straps, filters, mounts and supports,lens adapters, flashlamps, lenses, self-timers, flat panel display screens, microphones; all of the aforementioned goods not intended for use with or on backpacks
Please enter these changes by Examiner’s Amendment. If necessary to enter the amendment, I confirm that I am an associate working under the direction of Connie Ellerbach, counsel of record for GoPro.
Thank you for your attention to this matter.
Sincerely,
Jason
JASON MALASHEVICH
Associate | Fenwick & West LLP | +1 650-335-7708 | jmalashevich@fenwick.com
Admitted to practice in California.
FWT094811
From: Hilliard, Jessica [mailto:Jessica.Hilliard@USPTO.GOV]
Sent: Friday, March 13, 2020 5:18 PM
To: Jason Malashevich <jmalashevich@fenwick.com>
Subject: RE: Proposed Examiner's Amendment for Serial No. 88362888 (BACPAC); July 7, 2020 deadline
Good evening,
Thank you for checking in. I took a look at the proposed identification, and have been doing a little research as to the remaining goods in the proposed wording. I think that the proposed wording is close to being acceptable. However, while the deletions of some goods are helpful, there are still some remaining goods (such as microphones) that seem to have some applications in the industry where they are attached to backpacks/backpack straps. I think that the identification will need to state that all of the goods are not intended for use with or on backpacks to make it clear that the wording BACPAC is not descriptive of the goods. Below is a mark suggestion based on the applicant’s proposed identification (with my additional changes in bold):
International Class 9: accessories for cameras and photographic apparatus and instruments, namely, battery packs, battery chargers, flashes, hoods, shutters, lens adapters, flashlamps, lenses, self-timers, flat panel display screens, microphones; all of the aforementioned goods not intended for use with or on backpacks
If the applicant would like to adopt the wording suggested above (which I can enter via an examiner’s amendment), I think this would allow the Section 2(e)(1) refusal to be withdrawn and the applicant would not need to respond to the request for information (RFI).
Please let me know if you have any questions, and have a great weekend.
Best regards,
Jessica
Jessica L. Hilliard
Trademark Examining Attorney
Law Office 120
571-272-4031