NOTE TO THE FILE
SERIAL NUMBER: 88387934
DATE: 04/29/2020
NAME: karriola
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:From: Brown, Adraea <Adraea.Brown@harley-davidson.com>
Sent: Wednesday, April 29, 2020 5:57 PM
To: Arriola, Kimberly <Kimberly.Arriola@USPTO.GOV>
Cc: Trademark Docketing <TrademarkDocketing@harley-davidson.com>
Subject: RE: (ACTION REQUIRED) U.S. Trademark Application No. 88387934 HARLEY
Hi Kimberly:
Thank you for the email. Yes, we would like to claim priority via registration number 4955539, and would appreciate the Examiner’s amendment as an easy solution.
Thank you again,
Adraea
From: Arriola, Kimberly <Kimberly.Arriola@USPTO.GOV>
Sent: Wednesday, April 29, 2020 2:57 PM
To: Brown, Adraea <Adraea.Brown@harley-davidson.com>
Cc: Trademark Docketing <TrademarkDocketing@harley-davidson.com>
Subject: (ACTION REQUIRED) U.S. Trademark Application No. 88387934 HARLEY
Importance: High
[External Email]
Hi Ms. Brown,
I am the examining attorney for trademark application Serial No. 88387934 HARLEY. I have received the submitted SOU, however, I cannot accept it as it shows ornamental use rather than use as a source indicator.
I am writing to see if you would like to claim your prior Registration No. 4955539 HARLEY via Examiner’s amendment which may suffice to show secondary source under TMEP Section 1202.03(c):
To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act.
If you would like to claim your prior registration (Reg. No. 4955539 HARLEY) via Examiner’s Amendment, please e-mail me back by TOMORROW 5:00 PM EST, APRIL 30TH, 2020. If I do not hear from you by then, I will issue an Office action with the ornamental refusal.
All my best,
Kimberly C. Arriola
Law Office 128