NOTE TO THE FILE
SERIAL NUMBER: 88403969
DATE: 01/30/2020
NAME: ahesik
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:X OTHER: See email below.
Hi Nancy,
Great, thanks! I’ll amend the applications as indicated below. I will not issue a 2(d) refusal for Class 28. I’ll issue EAs this afternoon.
--April
April Hesik
Trademark Examining Attorney
Law Office 124
United States Patent and Trademark Office
(571) 272-4735
Notice to applicants and attorneys: 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 - .05.
From: Nancy Zoubek <nzoubek@rlfllp.com>
Sent: Thursday, January 30, 2020 2:33 PM
To: Hesik, April <april.hesik@USPTO.GOV>
Cc: trademark@rlfllp.com
Subject: RE: SHADOWMAN applications
Hi April,
Thanks for your response.
I authorize you to make the amendments indicated in your below email.
With respect to Serial No. 88403975—Class 28: if we were to amend the application as indicated below please advise if that would that be sufficient for overcoming the 2(d) refusal given the sports training equipment has been deleted.
Toys, including games and playthings, namely, action figures and accessories therefor; playsets for action figures; plush toys; balloons; games, namely, board games, card games,
action skill games; educational development skill games; playing cards; toy vehicles; dolls; manipulative toys, namely, manipulative games and, manipulative puzzles; toy trains, toy musical instruments, toy kitchens, toy kitchen utensils; plastic and vinyl toy characters; apparatus for electronic games other than those adapted for use with an external display screen or monitor; home video game machines; hand-held video game machine; electronic educational game machines for children; equipment sold as a unit for playing board, card,kickball, tossing and catchingand memory games; hand-held game units for playing electronic games for use with external display screen or monitor; game equipment sold as a unit for playing board games and card games; stand-alone video output games machines;sporting articles, namely, balls for sport andballs for playground use, sleds, table tennis paddles, baseball gloves, swim fins,swimming floats for recreational use, swim boards for recreational use; game equipment sold as a unit for playing a board game; stand alone video output game machines; slot machines; ride-on toys; gaming equipment, namely, slot machines with or without video output; jigsaw and manipulative puzzles;swimming floats for recreational use; toy sets in the nature of toy construction sets; Christmas tree ornaments and decorations; Halloween costume masks
Please call me at 212-448-1800 if you wish to discuss.
Thank you for your assistance on this matter.
Kind regards,
Nancy
From: Hesik, April <april.hesik@USPTO.GOV>
Sent: Tuesday, January 28, 2020 8:19 AM
To: Nancy Zoubek <nzoubek@rlfllp.com>
Subject: RE: SHADOWMAN applications
Hi Nancy—just checking in to see whether you’ve gotten any feedback on these. I have to take action by Thursday COB (either EAs, final actions, or pubs), so please let me know soon. Thanks!
--April
April Hesik
Trademark Examining Attorney
Law Office 124
United States Patent and Trademark Office
(571) 272-4735
Notice to applicants and attorneys: 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 - .05.
From: Nancy Zoubek <nzoubek@rlfllp.com>
Sent: Monday, January 13, 2020 12:37 PM
To: Hesik, April <april.hesik@USPTO.GOV>
Cc: trademark@rlfllp.com
Subject: RE: SHADOWMAN applications
Hi April,
Thanks for your email. I will review and get back to you.
With respect to Class 28, I understand that the cited registration covers “Sports training apparatus” and specifically, “tackling bags, tackling pads, tackling shields, tackling dummies, tackling sleds, tackling platforms with multiple padded dummies, tackling simulators, weighted bags, weights, shields, pads and padded arms.” In contrast my client’s application targets toys and other goods in Class 28 that are typical merchandise sold in the comic book and entertainment industry. In applicant’s case, the merchandise will be sold in association with the client’s SHADOWMAN character, which has been around since at least as early as 1992. Although we do not believe that confusion is likely, and my client has been using its SHADOWMAN trademark in connection with certain toys prior to the registrant’s alleged first use, to readily address this matter my client may be willing to amend some of the language. What would we need to clarify or delete in the identification to readily eliminate any concerns of confusion?
If you prefer, I can be reached at 212-448-1800 between the hours of 10am and 6pm Monday – Friday.
Thanks again,
Nancy
From: Hesik, April <april.hesik@USPTO.GOV>
Sent: Monday, January 13, 2020 11:00 AM
To: Nancy Zoubek <nzoubek@rlfllp.com>
Subject: SHADOWMAN applications
Hi Nancy—Thanks for your responses for the SHADOWMAN applications. For clarity’s sake, I’ve summarized the amendments below. I have a few follow-up clarifications on the IDS, particularly with regard to classes 14, 21, 24 and 25. Please let me know if you authorize me to enter the amendments suggested in bold below via Examiner’s Amendments or whether you have any questions. Thanks very much.
88460031—Class 9—amended ID acceptable.
88403965 –Class 14—“ornamental pins for headwear” is indefinite because could still include novelty pins as opposed to jewelry; can clarify that goods are “ornamental jewelry pins for headwear.” Also, while it is acceptable to transfer key chains from 88403968, wording must be “non-metal and non-leather key chains” to remain within scope of original wording. E.g.:
Class 14: Clocks; watches; jewelry; charms, namely, charms for jewelry, charms for key rings, charms for watch bands, jewelry charms; necklaces; rings; bracelets; lapel pins; ornamental pins, namely, ornamental lapel pins and ornamental jewelry pins for headwear, pins being jewelry; beads for making jewelry; non-metal and non-leather key chains
88403966—Class 18—“lunch bags” is deleted because transfer of “lunch bags not of paper” to 8840396 is acceptable; amended ID is:
Class 18: All-purpose carrying bags; tote bags; satchels; backpacks; athletic bags; duffel bags; book bags; messenger bags; handbags; wallets; coin purses; garment bags for travel; beach bags; luggage and trunks, namely, travelling trunks, trunks being luggage; textile shopping bags, re-useable shopping bags; pouches for holding school supplies, namely, textile pouches sold empty that may be used to hold school supplies; accessory pouches, namely, pouches for holding make-up, keys, and other personal items; school bags; umbrellas;
lunch bags
88403968—Class 20—key chains may be moved to class 14; however, wording must be “non-metal and non-leather key chains” to remain with scope of original ID; sleeping bags moved to Class 24 in 88403972. Amended ID to read:
Class 20: Ottomans; pillows; busts, figurines, statues and sculptures of plaster, plastic, wax or wood; busts, figurines, statues and sculptures made of cold cast resin; plastic cake decorations; picture frames;
non-metal and non-leather key chains; sleeping bags
88403969—Class 21—transfer of “placemats of plastic” and “tablemats not of paper or textile” is acceptable; also, may transfer “placemats, not of paper or textile” from Class 24.
Class 21: Beverage ware; containers for beverages and food, namely, insulated containers for food and beverages, household containers for food; coffee mugs; beverage glassware; water bottles and containers, namely, water bottles sold empty; containers sold empty for household use; insulated containers for food and beverages; insulators for food and beverage containers, namely, insulated sleeve holders for bottles and cans; lunch bags, namely, thermal insulated bags for food or beverages; insulating sleeve holder for beverage cups, bottles and cans; bottle openers; lunch boxes; lunch bags not made of paper; cosmetic utensils, namely, combs, hair-brushes, toothbrushes, toothbrush cases; tableware, namely, plates, bowls and utensils, namely, serving forks, serving spoons, mixing spoon; cooking utensils; tableware utensils, namely, spoons, knives, chop sticks; piggy banks; soap dispensers; waste baskets; placemats of plastic; tablemats not of paper or textile; placemats, not of paper or textile
88403972—Class 24—transfer of “sleeping bags” from 8840396 is acceptable. Also, I initially overlooked that “place mats, not of paper” and “table mats not of paper” are acceptable because wording “not of paper” could include textile goods in Class 24 or plastic goods in Class 21. The following amendments would be acceptable:
Class 24: Household textile goods, namely, bed and table linens; bed blankets, bed sheets, bed sheet sets; pillow cases, comforters, duvet covers, pillow shams, bed covers, bedspreads, bed skirts, bed spreads, crib bumpers; blankets, namely, bed blankets, blanket throws, children's blankets, pet blankets; throws; window curtains; curtains of textile or plastic; diaper changing cloths for babies; diaper changing pads not of paper;
place mats, not of paper;placemats of textile plastic table covers; towels; wash clothes; shower curtains; table cloths not of paper; table mats of textile;table mats not of paper; textile wall hangings, namely, cloth posters; towels of textile; throw rugs; kitchen linens, namely, dish cloths, kitchen towels; sleeping bags
88403961—Class 25—“jogging clothes” is indefinite because items of clothing must be listed; can replace with “jogging outfits, jogging pants, jogging tops, jogging suits,” e.g.:
Class 25: Clothing and accessories, namely, shirts, t-shirts, pants, shorts; outerwear, namely coats, jackets, and rainwear; dresses, skirts, jogging clothes, namely, jogging outfits, jogging pants, jogging tops, jogging suits; warm-up suits, sweat shirts, sweaters, pullovers, scarves, gloves, mittens, ear muffs, bandanas, leggings, loungewear, lingerie, belts, vests, suspenders, neckwear, ties as clothing, wristbands as clothing, swimwear; booties; tops and bottoms as clothing; hoodies, infantwear, sleepwear; robes; underwear; socks; beachwear; costumes for use in role-playing games; Halloween costumes and masks sold in connection therewith; headwear; footwear
88403975—Class 28—amended ID acceptable; however, cited application has registered, so non-final 2(d) refusal will be issued.
April Hesik
Trademark Examining Attorney
Law Office 124
United States Patent and Trademark Office
(571) 272-4735