NOTE TO THE FILE
SERIAL NUMBER: 88411377
DATE: 12/30/2019
NAME: jtoy
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 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: Toy, Joshua
Sent: Monday, December 30, 2019 2:04 PM
To: Flavia Benson <fbenson@earthsafeca.com>
Subject: RE: Serial No. 88411377
Mr. Benson:
It appears your question in respect to Class 35 pertains to the partial requirement to amend the identification of services. Assuming such is the case, it would be acceptable to respond to the requirement by deleting the services in Class 35 and adopting the services suggested in the Office action in Class 44.
In respect to the substitute specimen question you raised, it is permissible to redact the pricing information on advertising for the services. If such a specimen is submitted, it would be best to indicate in the description of the specimen that the prices have been redacted to protect proprietary/sensitive information, or the like.
In respect to your comment concerning the broadly identified goods in the registration, I will note that for purposes of the 2(d) analysis, broadly described goods are presumed to encompasses all goods of the type described. Moreover, when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. However, I will consider all arguments submitted in a response.
Please let me know if you have any additional questions.
Thanks,
Josh
Joshua S. Toy
Trademark Examining Attorney
U.S. Patent and Trademark Office
Madison Building
Law Office 120
600 Dulany Street
Alexandria, VA 22314
Phone: 571-272-4856
Fax: 571-273-4856
From: Flavia Benson <fbenson@earthsafeca.com>
Sent: Monday, December 30, 2019 1:27 PM
To: Toy, Joshua <Joshua.Toy@USPTO.GOV>
Subject: Serial No. 88411377
Dear Examining Attorney Toy,
I am getting ready to submit a response to some of the issues identified, and was hoping I could get some clarification/guidance prior to responding.
In regards to Class 35 Partial Refusal, would we be able to drop Class 35 from the application entirely, and replace with Class 44? Your suggestion for changes accurately describe the services we are providing. In healthcare we provide services in doing microbiological culturing, identifying pathogens on surfaces so that we can consult on best practices. Our services contain price lists which are not listed on our site, and are provided to different hospitals on a case by case and frequency of swabbing (for pricing) basis. In sending a different specimen, am I able to redact any pricing?
Regarding Section 2(d) Refusal, Registration 5276640 uses broad wording to describe all-purpose cleaning, whereas Applicant uses very specific “disinfectant” language of a sporicidal tablet form disinfectant (not cleaner) specifically for healthcare/commercial use. The products are not sold to consumers. The screenshots provided for other tablet disinfectants offer the same formulation of our tablets (same EPA sub registration – Brutab and TexTab), but they also are not sold to consumers, but institutions only. For example, Brutab6S Registration 4602936 which is registered broadly under Class 5 as an all-purpose disinfectants & sanitizers. We carefully looked at a more tailored language for EvaClean for that reason, and in my response, I’ll note the unrelatedness of the goods, different customer base, and distinction of goods and uses compared to Everclean, although I have not been able to find a product with the trademark under Registrant’s website, Steel City Vacuum Company.
I look forward to hearing from you regarding Class 35.
Warmest regards,
Flávia
Flávia R. Benson
SVP Operations & General Counsel | EarthSafe Chemical Alternatives
145 Wood Rd., Braintree, MA 02184
Direct: 781-752-1212
Cell: 617-224-8277| fbenson@earthsafeca.com
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