NOTE TO THE FILE
Sent to TICRS as Serial Number: 88388547SERIAL NUMBER: 88388516
DATE: 07/01/2019
NAME: asteel1
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 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: Baldridge, Adam [mailto:abaldridge@bakerdonelson.com]
Sent: Thursday, June 27, 2019 4:35 PM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: 4 Ryan & Rose applications
Thank you.
Adam S. Baldridge
Shareholder | Chair - Intellectual Property and Technology Litigation
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
165 Madison Avenue, Suite 2000
Memphis, Tennessee 38103
Direct: 901.577.2102
Fax: 901.577.0838
Firm Bio: www.bakerdonelson.com/adam-baldridge/
LinkedIn Profile: www.linkedin.com/in/adambaldridge
E-mail: abaldridge@bakerdonelson.com
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC represents clients across the U.S. and abroad from offices in
Alabama, Florida, Georgia, Louisiana, Maryland, Mississippi, South Carolina, Tennessee, Texas and Washington, D.C.
From: Steel, Alyssa [mailto:Alyssa.Steel@USPTO.GOV]
Sent: Thursday, June 27, 2019 3:19 PM
To: Baldridge, Adam
Subject: RE: 4 Ryan & Rose applications
Great! Thank you.
I’ll make the changes on Monday.
Alyssa
From: Baldridge, Adam [mailto:abaldridge@bakerdonelson.com]
Sent: Thursday, June 27, 2019 4:17 PM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: 4 Ryan & Rose applications
Alyssa,
Thanks for your email. The revised description below for Class 12 is acceptable. Because the holder is not adapted for the phone, I don't think we need anything in Class 9. Please let me know if you have any additional questions.
Thank you.
Adam
Adam S. Baldridge
Shareholder | Chair - Intellectual Property and Technology Litigation
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
165 Madison Avenue, Suite 2000
Memphis, Tennessee 38103
Direct: 901.577.2102
Fax: 901.577.0838
Firm Bio: www.bakerdonelson.com/adam-baldridge/
LinkedIn Profile: www.linkedin.com/in/adambaldridge
E-mail: abaldridge@bakerdonelson.com
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC represents clients across the U.S. and abroad from offices in
Alabama, Florida, Georgia, Louisiana, Maryland, Mississippi, South Carolina, Tennessee, Texas and Washington, D.C.
From: Steel, Alyssa [mailto:Alyssa.Steel@USPTO.GOV]
Sent: Thursday, June 27, 2019 3:14 PM
To: Baldridge, Adam
Subject: RE: 4 Ryan & Rose applications
Dear Adam,
Thank you for responding. I’m concerned about the ID for “Cutie Holder” since these could be viewed as phone holders, where the holder is adapted for the phone, and in that case, it’s still in Class 9. For it to be in Class 12, the emphasis need to be on the holder being for the stroller. Would it be acceptable to amend it to read:
Class 12
Cup and phone holders specially adapted for use on strollers or in vehicles
I will be leaving soon and out for most of the day tomorrow. If these amendments look ok, then I will enter the Examiner’s Amendments on Monday.
Thank you for your cooperation, and have a great weekend!
Best regards,
Alyssa
/Alyssa Paladino Steel/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 124
(571) 272-8808
Please note: Relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-709.05.
From: Baldridge, Adam [mailto:abaldridge@bakerdonelson.com]
Sent: Thursday, June 27, 2019 3:48 PM
To: Steel, Alyssa <Alyssa.Steel@USPTO.GOV>
Subject: RE: 4 Ryan & Rose applications
Alyssa,
Thank you for your email and call. Here are the responses to your email:
“CUTIE STRAP” (SN 88388516)
- Disclaimer agreeable
- Agreeable to amend ID from “glasses retainer” to “eyewear retainer”
“CUTIE LANYARD” (SN 88388487)
- Disclaimer agreeable
- Agreeable to amend ID from “lanyards” to “Lanyards for holding badges and name tags"
“CUTIE KEYCHAIN” (SN 88388531)
- Disclaimer agreeable
“CUTIE HOLDER” (SN 88388547)
- Disclaimer agreeable
- Agreeable to Class 12 and amend “cup holders” to “Cup and phone holders for use on strollers or in vehicles”
- The holders are not specially designed for holding phones, but instead for cups but can also hold phones.
Please let me know if this is sufficient or if you have any additional questions. I look forward to hearing from you.
Thank you.
Adam
Adam S. Baldridge
Shareholder | Chair - Intellectual Property and Technology Litigation
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
165 Madison Avenue, Suite 2000
Memphis, Tennessee 38103
Direct: 901.577.2102
Fax: 901.577.0838
Firm Bio: www.bakerdonelson.com/adam-baldridge/
LinkedIn Profile: www.linkedin.com/in/adambaldridge
E-mail: abaldridge@bakerdonelson.com
Baker, Donelson, Bearman, Caldwell & Berkowitz, PC represents clients across the U.S. and abroad from offices in
Alabama, Florida, Georgia, Louisiana, Maryland, Mississippi, South Carolina, Tennessee, Texas and Washington, D.C.
From: Steel, Alyssa [mailto:Alyssa.Steel@USPTO.GOV]
Sent: Thursday, June 27, 2019 9:37 AM
To: Baldridge, Adam
Subject: 4 Ryan & Rose applications
Dear Mr. Baldridge,
I wanted to follow-up my voicemail from Tuesday with an email that lists the requirements for the 4 trademark applications filed on behalf of Ryan and Rose, LLC. In each applications there is a requirement for a disclaimer, and in 3 of them, a need to amend the ID. The details are:
“CUTIE STRAP” (SN 88388516)
- Disclaimer of “Strap”
- Amend ID from “glasses retainer” to “eyewear retainer” in order to keep the goods in Class 9. Otherwise, the term “glasses” could refer to beverageware in Class 21.
“CUTIE LANYARD” (SN 88388487)
- Disclaimer of “lanyard”
- Amend ID from “lanyards” to “Lanyards for holding {indicate use, e.g., badges, keys}” to stay in 22; “Eyeglass lanyards” are in Class 9. This wording may be amended with an Examiner’s Amendment, if limited to one class. If expanded to a 2 class application, then I can send out a Priority Action for payment of the fee for the addition class.
“CUTIE KEYCHAIN” (SN 88388531)
- Disclaimer of “KEYCHAIN”
“CUTIE HOLDER” (SN 88388547)
- Disclaimer of “holder”
- Amend ID
§ Class 9 – amend “phone holder” to “Holders specially adapted for cell phones”
§ Class 12 – amend “cup holders” to “Cup holders for use in vehicles”
Please let me know if the suggested changes are acceptable, and if I may enter them for you with Examiner’s Amendments, where applicable. If you have any questions, please let me know.
Thank you for your cooperation.
Best regards,Alyssa
/Alyssa Paladino Steel/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 124
(571) 272-8808
Please note: Relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-709.05.
NOTICE: This electronic mail transmission with any attachments may constitute an attorney-client communication, protected health information (PHI) or other confidential information that is in fact confidential, legally protected from disclosure and/or protected by the attorney-client privilege. If you are the intended recipient, please maintain confidentiality and be aware that forwarding this e-mail to others may result in a waiver of these protections and privileges and regardless electronic communications may be at times illegally accessed and viewed. If you are not the intended recipient, this e-mail is not intended for transmission to you, nor to be read, reviewed, used, distributed or even received by you or any other unauthorized persons. If you have received this electronic mail transmission in error, please double delete it from your system immediately without copying, reading or disseminating it, and notify the sender by reply e-mail, so that our address record can be corrected. Thank you very much.