NOTE TO THE FILE
SERIAL NUMBER: 88453035
DATE: 08/21/2019
NAME: jnelman
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 X 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: Kimberly S. Grimsley [mailto:kim@olivergrimsley.com]
Sent: Wednesday, August 21, 2019 3:13 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Cc: Karri Moorehead <karri@olivergrimsley.com>; Tina Neuman <tina@olivergrimsley.com>
Subject: Re: Clarification Needed Regarding Application SN 88453035 SKYLARK
Dear Jesse,
I have spoken with the client regarding your requested changes and the client is amenable to the amendments with one addition noted in red below in Class 35.
Class 35— On-line retail store services featuring subscription boxes containing assorted items in the fields of science fiction, crime and crime solving, horror, suspense, and storytelling, namely, equipment sold as a unit for play parlor games, table games, party games, role playing games, team building games and also fiction books on a variety of topics.
The Client agrees to the changes in Class 41 as you have requested.
Please let me know if you require any additional information.
Best Regards,
Kim
Kimberly S. Grimsley, Esq.
Member,
Oliver & Grimsley, LLC
502 Washington Avenue, Suite 605
Towson, MD 21204
(443) 541-5680
(443) 541-5682 (Direct)
From: "Nelman, Jesse" <Jesse.Nelman@USPTO.GOV>
Date: Tuesday, August 20, 2019 at 7:43 PM
To: Grimsley Kimberly <kim@olivergrimsley.com>, Karri Moorehead <karri@olivergrimsley.com>, Tina Neuman <tina@olivergrimsley.com>
Subject: Clarification Needed Regarding Application SN 88453035 SKYLARK
Hello,
I’m the trademark examining attorney assigned to U.S. APPLICATION SERIAL NO. 88453035 SKYLARK. There’s an issue that I’d like to speak with you about that can be resolved with applicant’s agreement. Due to Office deadlines, I will need a response from you no later than August 21, 2019. If I don't hear from you by this time, I will issue an Office action with respect to the relevant issue, to which you will have an opportunity to respond.
Identification of Services
The identification of services is indefinite. Importantly, the wording “assorted items” is indefinite and overly broad. Applicant must specify the nature of the items. Based on the research I’ve conducted regarding applicant’s subscription boxes, I’ve made certain suggestions. Additionally, the wording “featuring works of fiction, storytelling and subjects of general human interest” is indefinite and unclear. Applicant must further specify the subject matter. I suggest the following, if accurate:
Class 35— On-line retail store services featuring subscription boxes containing assorted items in the fields of science fiction, crime and crime solving, horror, suspense, and storytelling, namely, equipment sold as a unit for play parlor games, table games, party games, role playing games and also fiction books on a variety of topics.
Class 41— Production of audio recording; Entertainment services, namely, providing podcasts featuring fictional and non-fictional storytelling on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Production and distribution of videos featuring fictional and non-fictional stories on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Entertainment services in the nature of creation, development, and production of television programming; Entertainment services in the nature of the production and distribution of film, television series and short form multimedia entertainment content; Production of films.
Please let me know if applicant agrees to the amendments above.
If you have any questions, please contact me. I will be happy to assist you.
Sincerely,
Jesse Nelman
Trademark Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-0191 | jesse.nelman@uspto.gov
All informal e-mail communications relevant to this application will be placed in the official application record.