Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88442302

DATE:                                08/12/2019

NAME:                               khansrajh

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       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS (amend ID, attorney info, disclaimer)

        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:

     OTHER:

From: Ilya Kushnirsky [mailto:ilya@kgfirm.com]
Sent: Monday, August 12, 2019 9:30 AM
To: Hansrajh, Keton <Keton.Hansrajh@USPTO.GOV>
Subject: Re: TRADEMARK APPLICATION SERIAL NO. 88442302 (NOT REAL ART); RESPONSE REQUIRED BY 8/15/19

 

Mr. Hansrajh, thank you for the email. Please see responses below.

 

1. We authorize the amended identification of goods and/or services in your email as to all three classes (35, 36, and 41). We confirm that the amended identification is accurate.

 

2. We authorize the addition of a disclaimer for the word ART.

 

3. My bar admission information is as follows: (1) bar membership number: 4533550; (2) state: New York; (3) year of admission: 2007.

 

4. I agree to the following statement: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”

 

Please let me know if you need additional information. Thank you.

 

Ilya Kushnirsky

 

On Fri, Aug 9, 2019 at 4:54 PM Hansrajh, Keton <Keton.Hansrajh@uspto.gov> wrote:

Dear Mr. Kushnirsky,

 

I am the examining attorney assigned to the above-referenced application, and there are issues that must be resolved before I can likely move the application forward.

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

Some of the wording with regards to “business” and “design”, particularly in Class 041, is indefinite. While that language can probably remain for the educational services such as professional training, the entertainment services are more complicated.  For example, a website with business information would be classified in Class 035 and a website featuring design information, could entail computer design, which would implicate Class 042.

 

The following amended identification of goods and/or services is suggested, if accurate, with changes highlighted in bold:

 

Class 035: Arranging and conducting business conferences and business exhibitions in the fields of art, culture, design, entertainment, and media for commercial and advertising purposes; Promotion of entertainment events for others in the fields of art, music, dance, culture, design, entertainment, and media; Promotion of business networking events and exhibitions for business and advertising purposes for others in the fields of art, culture, design, entertainment, media, and business development within such fields

 

Class 036: Providing grants for artists to create and exhibit new works of art

 

Class 041: Organizing, arranging, and conducting conferences, exhibitions, and panel discussions, and professional training events  in the fields of art, culture, design, entertainment, and media relating to entertainment,, and business development within such fields all for educational and entertainment purposes,; Organizing, arranging, and conducting professional training workshops in the fields of art, culture, design, entertainment, media, and business development within such fields for educational purposes; Entertainment services, namely, organizing, arranging, conducting, and hosting social entertainment events; Entertainment services, namely, providing podcasts and live online non-downloadable videos livestreams in the fields of art, culture, design, entertainment, media, news, and business development within such fields; Entertainment services, namely, providing a website featuring information and links in the fields of art, culture, design, entertainment, and media relating to entertainment, and business development within such fields; Art exhibition services

 

DISCLAIMER

 

The wording “ART” is merely descriptive of a feature of applicant’s goods and/or services and must be disclaimed. 

                           

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to descriptive wording in the mark.  An applicant may not claim exclusive rights to words that others may need to use to describe or show their goods and/or services in the marketplace.  A disclaimer does not affect the appearance of the mark; that is, a disclaimer does not physically remove disclaimed matter from the mark.

 

ATTORNEY BAR INFORMATION AND ATTESTATION

 

As of August 3, 2019, the following attorney information is required to move the application forward:

 

Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Applicant’s attorney must agree to the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

 

With your authorization to do so, I can add the amendments via Examiner’s Amendment before moving the application along for publication review.  Alternatively, if you would like additional time, I can also prepare a Priority Action that will detail the requirements.  

 

Please let me know by THURSDAY, AUGUST 15 if you have any questions or would like to discuss further, and which of the above options are acceptable. If I have not heard from you by then, I’ll move forward with an Office Action formalizing the above issues.

 

Best,

 

Keton Hansrajh

Trademark Examining Attorney, Law Office 128

U.S. Patent & Trademark Office

Phone: (571) 272-3396

keton.hansrajh@uspto.gov