NOTE TO THE FILE
SERIAL NUMBER: 88380907
DATE: 06/27/2019
NAME: jgriffin
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 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: Elaine Papas [mailto:epapas@epapaslaw.com]
Sent: Thursday, June 27, 2019 11:13 AM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: 'Elaine Papas' <epapas@epapaslaw.com>
Subject: FW: AB/EDPLaw Serial number 88380907: Received Your Voluntary Amendment Form
Importance: High
TO: James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169 (voice)
571-273-9169 (fax)
Via Email: jim.griffin@uspto.gov
Jim,
As per your email advisement of yesterday regarding my client’s AB/EDPLaw Serial number 88380907 “Applied Brilliance”, please see below confirmation that the $275 fee for additional Class 35 has been paid online.
Kindly proceed with filing as Examiner’s Amendment for approval of this application and publication.
Thank you,
Elaine
_____________________________________
The Law Office of Elaine D. Papas
Direct Tel: 646-476-5590
Cell: 917-539-1820
Fax: 775-871-5720
Email: epapas@epapaslaw.com
Website: http://www.epapaslaw.com
[attachment deleted]
From: Griffin, Jim
Sent: Wednesday, June 26, 2019 4:16 PM
To: epapas@epapaslaw.com
Cc: epapas2001@earthlink.net; elainepapas@gmail.com
Subject: Amendments for APPLIED BRILLIANCE trademark, ser. no. 88380907
Importance: High
Hi Elaine,
I’m the examiner reviewing this application. I has two issues we need to correct before I can approve it.
First, the easier of the two is that I don’t think BRILLIANCE needs to be disclaimed. Unless I’m missing something, it does not appear to be descriptive of the services.
Second, the services as written include educational services in Class 41 as well as business consultation in Class 35. Also, wording like a “range of events and experiences” is unacceptable as indefinite. Applicant must list specific services or delete this wording. So the applicant must limit the recitation of services to one class or the other, or they can pay another filing fee to add the second class. The current specimen is acceptable for both classes, so as long as the dates of use are also the same for both classes, then I can add the second class for you if you pay the fee online. As for the two classes, I’d suggest the following:
Business consultation customized for clients in the field of promoting innovation and creativity in companies and organizations seeking effective ways to convey to their customers, employees and other stakeholders how emerging trends and major cultural shifts affect their businesses (Class 35), and/or
Educational services, namely, conferences customized for clients in the field of innovation and creativity in companies and organizations seeking effective ways to convey to their customers, employees and other stakeholders how emerging trends and major cultural shifts affect their businesses (Class 41).
Please let me know if either or both of those suggestions are acceptable and I can make them for you via an examiner’s amendment. To pay for the extra class ($275) online, go here: http://teas.gov.uspto.report/office/pra/, and click “yes” for number 6.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169 (voice)
571-273-9169 (fax)