Notation to File

NOTE TO THE FILE

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SERIAL NUMBER:            88412449

DATE:                                07/25/2019

NAME:                               lrichards

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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: email:

From: Kroninger, Timothy K. [mailto:tkkroninger@varnumlaw.com]
Sent: Thursday, July 25, 2019 1:13 PM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: Russo, Jodi L. <jlrusso@varnumlaw.com>
Subject: U.S. Trademark Applications, Serial nos. 88435599 ID CARD PROS and design; 88435572 for ID CARD PROS in standard characters; and 88412449 for ID CARD PROS and design - Applicant's Further Responses

 

Dear Examiner,

 

Thank you for your response.

 

Regarding 88412449 (ID CARD PROS and design), the disclaimer that you propose is acceptable to Applicant; namely:

 

No claim is made to the exclusive right to use “ID CARD” as to International Classes 16, 18, and 22 apart from the mark as shown.

 

Regarding the wording “identity … printers”: they are “identity card printers.”

 

If you have any further questions, please let me know.

 

Thanks,

 

Tim

 

Timothy K. Kroninger
Attorney and Partner
Direct: (313) 481-7320
Cell: (248) 505-2348

Varnum LLP 160 W. Fort St., 5th Floor Detroit, Michigan 48226	Main: (313) 481-7300 Fax: (313) 481-7340 www.varnumlaw.com

******************************
CONFIDENTIAL
The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is only for viewing and use of the intended recipients. If you are not an intended recipient, you are hereby notified that any use, disclosure, or copying is strictly prohibited and may be unlawful. If you have received this communication in error, please immediately notify the sender at (313) 481-7300
******************************

From: Richards, Leslie [mailto:leslie.richards@USPTO.GOV]
Sent: Wednesday, July 24, 2019 11:53 AM
To: Kroninger, Timothy K.
Cc: trademarks; Russo, Jodi L.
Subject: RE: U.S. Trademark Applications, Serial nos. 88435599 ID CARD PROS and design; 88435572 for ID CARD PROS in standard characters; and 88412449 for ID CARD PROS and design - Applicant's Responses

 

Thank you for your response.

 

For 88412449 (ID CARD PROS and design), I think it is acceptable to disclaim the wording "ID CARD" with respect to all the listed goods except for key rings.  Therefore, the disclaimer will read as follows:

 

No claim is made to the exclusive right to use “ID CARD” as to International Classes 16, 18, and 22 apart from the mark as shown.

 

The only other issue I have is with the wording “identity … printers”. 

 

Are these “identity card printers” or “document printers for printing identify information”?

 

 

 

From: Kroninger, Timothy K. [mailto:tkkroninger@varnumlaw.com]
Sent: Tuesday, July 23, 2019 10:25 PM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: trademarks <trademarks@varnumlaw.com>; Russo, Jodi L. <jlrusso@varnumlaw.com>
Subject: U.S. Trademark Applications, Serial nos. 88435599 ID CARD PROS and design; 88435572 for ID CARD PROS in standard characters; and 88412449 for ID CARD PROS and design - Applicant's Responses

 

Dear Examiner Richards,

 

Thank you again for your July 23 correspondence on the above-referenced ID CARD PROS applications.  I provide the following in response:

 

(1)     For U.S. Trademark application serial nos. 88435599 ID CARD PROS and design [ITU] and 88435572 for ID CARD PROS in standard characters [ITU], the wording “printers” and “signs” in the identification of goods is too broad.

 

For example, “Document printers” and “photo printers” are acceptable in Class 9.

 

For example:  Non-luminous and non-mechanical metal signs for decoration are in Class 6; Neon and luminous signs are in Class 9; Printed paper signs are in Class 16;   Non-luminous and non-mechanical signs, not of metal are in Class 19; Printed vinyl signs  are in Class 20.

 

APPLICANT RESPONSE:    

 

Printers:  The type of printers are: Document printers; Photo, identity, and identification card printers; Document printers for use with computers (class 09).

 

Signs:  The types of signs are:  Non-luminous and non-mechanical signs, not of metal (class 19).

 

Applicant would agree to add class 19 to the application and pay the applicable $275 class fee.

 

(2)    For 88412449 for ID CARD PROS and design [Actual Use; class 16], “lanyards for holding badges” are in Class 22; “credit card holders” are in Class 18 and “key rings” are in Class 14.   The specimen is only acceptable for Class 16. 

 

APPLICANT RESPONSE:    

 

·       Applicant desires to retain each of the listed goods; therefore, Applicant would agree to add the additional classes of 14, 18, and 22 to the application's existing class 16, and pay the applicable $275 fee per class.

o   However, Applicant would like to retain the class 16 and 22 (lanyards) with this Application no. 88412449 on an actual use basis (Applicant can provide use specimens for lanyards), while moving classes 14 and 18 and the applicable listed goods to pending ITU application no. 88435599 also for ID CARD PROS and design (i.e., Applicant does not presently have actual use for such new classes/goods).

 

(3)     Also, I will need a disclaimer of the wording ID CARD for all applications since this wording is descriptive of the goods. 

 

APPLICANT RESPONSE:    

 

·       Applicant agrees to amend application serial no. 88435599 (ID CARD PROS and design) and 88435572 and serial no. (ID CARD PROS in standard characters) to disclaim the wording "ID CARD."

 

·       Applicant agrees to amend application, serial no. 88412449 (ID CARD PROS and design) to disclaim the wording "ID CARD" with respect to all the listed goods except for key rings, as Applicant believes ID CARD is not merely descriptive for key rings.  If Applicant may respectfully ask for your rationale covering key rings and ask for your reconsideration of such.

 

Please let me know if you have any questions regarding the above.  Also, please advise me if I did not respond to any of your questions, as I intended to do so.

 

Thank you,

 

Tim

 

 

Timothy K. Kroninger
Attorney and Partner
Direct: (313) 481-7320
Cell: (248) 505-2348

Varnum LLP 160 W. Fort St., 5th Floor Detroit, Michigan 48226	Main: (313) 481-7300 Fax: (313) 481-7340 www.varnumlaw.com

******************************
CONFIDENTIAL
The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is only for viewing and use of the intended recipients. If you are not an intended recipient, you are hereby notified that any use, disclosure, or copying is strictly prohibited and may be unlawful. If you have received this communication in error, please immediately notify the sender at (313) 481-7300
******************************

From: Kroninger, Timothy K.
Sent: Tuesday, July 23, 2019 9:04 PM
To: Richards, Leslie
Cc: trademarks
Subject: U.S. Trademark application serial nos. 88435599 ID CARD PROS and design; 88435572 for ID CARD PROS in standard characters; and 88412449 for ID CARD PROS and design

 

Dear Examiner Richards,

 

Thank you for your assistance with these ID CARD PROS applications. I will review your comments and feedback, and plan to get back to you shortly.

 

Best regards,

 

Tim Kroninger

 

Timothy K. Kroninger
Attorney and Partner
Direct: (313) 481-7320
Cell: (248) 505-2348

Varnum LLP 160 W. Fort St., 5th Floor Detroit, Michigan 48226	Main: (313) 481-7300 Fax: (313) 481-7340 www.varnumlaw.com

******************************
CONFIDENTIAL
The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is only for viewing and use of the intended recipients. If you are not an intended recipient, you are hereby notified that any use, disclosure, or copying is strictly prohibited and may be unlawful. If you have received this communication in error, please immediately notify the sender at (313) 481-7300
******************************

From: Richards, Leslie [mailto:leslie.richards@USPTO.GOV]
Sent: Tuesday, July 23, 2019 3:34 PM
To: Kroninger, Timothy K.
Subject: U.S. Trademark application serial nos. 88435599 ID CARD PROS and design; 88435572 for ID CARD PROS in standard characters; and 88412449 for ID CARD PROS and design

 

RE:  U.S. Trademark application serial nos. 

88435599 ID CARD PROS and design;

88435572 for ID CARD PROS in standard characters; and

88412449 for ID CARD PROS and design

 

Dear Mr. Kroninger,

 

I have examined the above referenced applications and there are some identification issues, multiple class application issues and a disclaimer requirement, as follows: 

 

(1)     For U.S. Trademark application serial nos. 88435599 ID CARD PROS and design and 88435572 for ID CARD PROS in standard characters, the wording “printers” and “signs” in the identification of goods is too broad.

 

For example, “Document printers” and “photo printers” are acceptable in Class 9.

 

For example:  Non-luminous and non-mechanical metal signs for decoration are in Class 6; Neon and luminous signs are in Class 9; Printed paper signs are in Class 16;   Non-luminous and non-mechanical signs, not of metal are in Class 19; Printed vinyl signs  are in Class 20.

 

(2)    For 88412449 for ID CARD PROS and design, “lanyards for holding badges” are in Class 22; “credit card holders” are in Class 18 and “key rings” are in Class 14.   The specimen is only acceptable for Class 16. 

 

(3)     Also, I will need a disclaimer of the wording ID CARD for all applications since this wording is descriptive of the goods. 

 

I am happy to issue a combined Examiner’s amendment/ Priority Action for each case, since you may want to add a class.  Please let me know if that is acceptable.

 

Thank you,

Leslie

 

 

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

571-272-1256

leslie.richards@uspto.gov (informal inquires only)

 

E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to Office actions by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

 

         Sent to TICRS as Serial Number: 88435599
         Sent to TICRS as Serial Number: 88435572