NOTE TO THE FILE
Sent to TICRS as Serial Number: 88435497SERIAL NUMBER: 88443799
DATE: 07/22/2019
NAME: lrichards
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: Kroninger, Timothy K. [mailto:tkkroninger@varnumlaw.com]
Sent: Monday, July 22, 2019 11:26 AM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: trademarks <trademarks@varnumlaw.com>
Subject: RE: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768 - Applicant Responses
Good morning Examiner Richards,
Thank you for your prompt response, and I understand – I didn't recall that plaques were not included in the subject application filings.
Have a nice day,
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 48226Main: (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: Monday, July 22, 2019 11:19 AM
To: Kroninger, Timothy K.
Cc: trademarks
Subject: RE: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768 - Applicant Responses
Hi Tim,
Please see my most recent responses to your questions below in red/underlined.
Thanks,
Leslie
From: Kroninger, Timothy K. [mailto:tkkroninger@varnumlaw.com]
Sent: Friday, July 19, 2019 1:31 PM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: trademarks <trademarks@varnumlaw.com>
Subject: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768 - Applicant Responses
Hello Examiner,
Thank you for your further correspondence and assistance regarding the subject applications. My responses are inserted below in blue, immediately following your comments/requests. IF you have any further questions, please let me know.
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 48226Main: (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: Friday, July 19, 2019 12:27 PM
To: Kroninger, Timothy K.
Cc: trademarks
Subject: RE: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768 - Applicant Responses
Will do, thank you. Please see my notes in red below re: moving some of the goods to co-pending applications because of the classification and the combined Examiner’s amendment and Priority action for the Class 16 applications.
Also, I have a question regarding the specimens for Class 9, as indicated below.
Please let me know if you have any questions.
Thanks,
Leslie
From: Kroninger, Timothy K. [mailto:tkkroninger@varnumlaw.com]
Sent: Friday, July 19, 2019 12:21 AM
To: Richards, Leslie <leslie.richards@USPTO.GOV>
Cc: trademarks <trademarks@varnumlaw.com>
Subject: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768 - Applicant Responses
Dear Examiner Richards,
Thank you for your email and assistance with my client's CHEERSVILLE applications. My responses are provided below.
1. TRADEMARK EXAMINER:
For Serial Nos. 88435497 (standard characters) and 88443799 (with design), the identification of goods must be amended to : Drinkware, namely, mugs and water bottles sold empty in Class 21.
1. APPLICANT:
Agree/changes authorized.
NOTE: Serial No. 88443799 (with design) will be amended to: Drinkware, namely, mugs and water bottles sold empty; plaques of crystal, jade glass, and art glass”, in Class 21.
APPLICANT: This is fine/accepted. Also, however, this should also apply to application no. 88435497 (standard characters), correct?
**No, because the marks must be the same and a standard character mark for ‘plaques’ was not filed. Serial No. 88435385 for standard characters was only listed “non-metal trophies” in Class 20 as the goods.
2. TRADEMARK EXAMINER:
For Serial No. 88443768 (with design) , the identification of goods must be amended to specify the composition of the plaques in Class 20. For example, Non-metal trophies and plaques of _________ {indicate plastic, wax, wood} in Class 20.
2. APPLICANT:
Please amend as follows: "Non-metal trophies and plaques of acrylic, crystal, jade glass, and art glass."
NOTE: “plaques of acrylic” are in Class 20. Therefore, Serial No. 88443768 (with design), will be amended to: Non-metal trophies and plaques of acrylic in Class 20.
“Plaques of crystal, jade glass and art glass are in Class 21. Therefore, “Plaques of crystal, jade glass and art glass” will be moved to co-pending application serial no. 88443799, which is for the same mark and is for goods in Class 21.
APPLICANT: This is fine/accepted. Also, however, everything that is being done/amended with this application 88443768 (design) should also be done/amended with application no. 8843585 (standard characters), correct?
**No, because the marks must be the same and a standard character mark for ‘plaques’ was not filed. Serial No. 88435385 for standard characters was only listed “non-metal trophies” in Class 20 as the goods.
3. TRADEMARK EXAMINER:
For Serial Nos. 88435664(standard characters) and 88442952 (with design), the wording “ornamental webcam covers” are classified in the same class as the webcams, i.e., Class 9.
3. APPLICANT:
Accept adding (and paying the added classification fee for) class 09.
4. TRADEMARK EXAMINER:
Also, the identification of goods must be amended to specify the goods in the “gift sets” and list the Class 16 goods first. For example,
Pens; Notepads and blank journal books; Motivational, occasion, and compliment cards;
Ornamental webcam covers; Gift sets consisting primarily of employee printed appreciation awards, printed awards, and recognition cards, printed messages, notepads, pens, and decorative office desk items, namely, _______ [specify items]
4. APPLICANT:
Please update as: "…; Gift sets consisting primarily of employee printed appreciation awards, printed awards, and recognition cards, printed messages, notepads, pens, and decorative office desk items, namely, ornamental desktop pen and holder sets, figurines, and caricature-type paperweights.
For the Class 16 applications, I will need to issue a combined Examiner’s amendment (to amend the ID) and Priority action so that the additional fee can be submitted.
APPLICANT: Understood; this is fine/accepted.
WEBCAM COVERS:
Also, I want to verify that the specimens submitted with the applications and reproduced below are the webcam covers?
APPLICANT: Yes, the following are the webcam covers, plus I've also included below another depiction of them as displayed/shown/shown on the applicant's e-store:
(and as shown in applicant's e-store)
Please let me know if you have any questions.
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 48226Main: (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: Thursday, July 18, 2019 5:53 PM
To: Kroninger, Timothy K.
Subject: .S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768
RE: U.S. Trademark Applications for the mark CHEERSVILLE, Serial Nos. 88435497; 88443799; 88435664; 88442952; 88443768
Dear Mr. Kroninger,
I have examined the above referenced Trademark Application and there are just a couple of issues with the identification of goods that must addressed.
For Serial Nos. 88435497 (standard characters) and 88443799 (with design), the identification of goods must be amended to : Drinkware, namely, mugs and water bottles sold empty in Class 21.
For Serial No. 88443768, the identification of goods must be amended to specify the composition of the plaques in Class 20. For example, Non-metal trophies and plaques of _________ {indicate plastic, wax, wood} in Class 20.
For Serial Nos. 88435664(standard characters) and 88442952 (with design), the wording “ornamental webcam covers” are classified in the same class as the webcams, i.e., Class 9.
Also, the identification of goods must be amended to specify the goods in the “gift sets” and list the Class 16 goods first. For example,
Pens; Notepads and blank journal books; Motivational, occasion, and compliment cards;
Ornamental webcam covers; Gift sets consisting primarily of employee printed appreciation awards, printed awards, and recognition cards, printed messages, notepads, pens, and decorative office desk items, namely, _______ [specify items]
With your authorization, I can enter the above changes via examiner’s amendment. I can also issue a Priority Action for Serial Nos. 88435664(standard characters) and 88442952 (with design) in case you would like to add Class 9.
If that is acceptable, please fill in the blanks above and let me know.
Thank you,
/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.