NOTE TO THE FILE
SERIAL NUMBER: 88377177
DATE: 06/25/2019
NAME: jscleidorovich
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:We agree with the disclaimer and modification to 2(f) to support acquired distinctiveness in part for the HAGERTY component of the mark. Thank you!
--
John Di Giacomo
Revision Legal
Phone: (231) 714.0100
Fax: (231) 714.0200
Twitter: @jdigiacomo
From: "Scleidorovich, Joanna" <Joanna.Scleidorovich@USPTO.GOV>
Date: Tuesday, June 25, 2019 at 12:30 PM
To: John Di Giacomo <john@revisionlegal.com>
Subject: TRADEMARK APPLICATION - SERIAL NO. 88377177 (HAGERTY CARS AND CAFFEINE) - RESPONSE REQUIRED BY THURSDAY, 6/27/19
Dear Mr. Di Giacomo,
I am the examining attorney assigned to the above-referenced application and there are two issues that must be resolved before I can move the application forward.
- DISCLAIMER
The wording “CARS AND CAFFEINE” is merely descriptive of a feature of applicant’s services and must be disclaimed.
- ACQUIRED DISTINCTIVENESS CLAIM – 2(f) IN PART
In order to obtain registration on the Principal Register and avoid a Section 2(e)(4) refusal (primarily merely a surname), applicant may claim acquired distinctiveness over the “HAGERTY” portion of the mark by means of a claim of Section 2(f) based on a claim of ownership U.S. Registration No. 3724455 (“HAGERTY”).
With your authorization to do so, I can add the disclaimer statement, claim of ownership of U.S. Registration No. 3724455, and partial 2(f) claim via Examiner’s Amendment before moving the application along for publication review.
Please let me know by THURSDAY, JUNE 27, 2019 if you have any questions, need additional time to discuss with your client, or would like to discuss further. If I have not heard from you by then, I’ll move forward with an Office Action formalizing the above issue.
Kinds regards,
Joanna Scleidorovich
/Joanna Scleidorovich/
Trademark Examining Attorney
Law Office 128
(571) 270-7384
Joanna.Scleidorovich@USPTO.gov