Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88419229

DATE:                                08/27/2019

NAME:                               gmaciol

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
        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:

Good afternoon.

 

I would be happy to discuss any portion of the office action with you or a fellow associate.  My phone number is 571 272 9280.  I am usually available from 11am to 3pm and 5pm to 9pm for questions.

 

To answer some of your questions, I do not think an examiner’s amendment is appropriate for correcting the filing basis issue in this application because there are many other issues/refusals that must also be addressed.

 

As for the claim of  ownership, that is a legal conclusion that should not be addressed by informal emails; however, I would be happy to discuss the issue further with you over the phone.

 

Please feel free to call for further discussion.

 

Best regards,

 

Gene

571 272 9280

 

 

From: Ortega, Kelli <KOrtega@KelleyDrye.com>
Sent: Monday, August 19, 2019 3:54 PM
To: Maciol, Gene <Gene.Maciol@USPTO.GOV>
Cc: ecom103 <ecom103@uspto.gov>; Schwab, Cristiana <Cristiana.Schwab@USPTO.GOV>; Werner, Patricia <PWerner@KelleyDrye.com>
Subject: U.S. Trademark Application for CRAFTY+ (Ser. No. 88/419,229) in Classes 10, 11, 21, 25, 34, and 35

 

 

Dear Mr. Maciol:

 

We are counsel for Stobi GmbH & Co. KG, the applicant for the mark CRAFTY+ as set forth in U.S. Ser. No. 88/419,229.  We’ve reviewed your office action dated July 27, 2019 and have a few questions.

 

First, we believe it was an oversight that the filing basis was not specified. Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. Is it possible to amend the application to add Section 1(b) as the basis via an Examiner’s Amendment?

 

Second, we note that you have cited over 40 marks for likelihood of confusion. Our client owns a registration for the mark CRAFTY (Reg. No. 4,446,797) in Classes 10, 11, and 21.  If we add a claim of ownership for this registration, would that be sufficient to overcome any of the citations.

 

Finally, we would also like to request a quick phone call to discuss the cited marks in general to better understand why some of the marks were cited against our client’s application.  Please let us know if you are available this week for a call to discuss.

Thank you in advance.

 

Best,

Kelli

 

 

KELLI D. ORTEGA

Associate

Kelley Drye & Warren LLP
Tel: (212) 808-7755
kortega@kelleydrye.com

 

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