NOTE TO THE FILE
Sent to TICRS as Serial Number: 88454437SERIAL NUMBER: 88454433
DATE: 07/09/2019
NAME: mstadeli
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 88454424 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: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Monday, July 08, 2019 2:51 PM
To: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>; tmdoctc <TMDocTC@fr.com>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Tina Ingrande <ingrande@fr.com>; APS Incoming <APSI@fr.com>
Subject: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Dear Ms. Stadeli,
Thank you very much! We appreciate your removing the disclaimer request. While I did ping my client this morning, I think we may need some additional time. We’re happy to review the Examiner’s Amendment, with a priority action.
Thank you!
Lisa
Lisa Greenwald-Swire :: Principal :: Fish & Richardson P.C.
500 Arguello Street Suite 500, Redwood City, CA 94063
650 839 5198 direct :: lgs@fr.com
fr.com :: www.FishTMCopyrightBlog.com
From: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>
Sent: Monday, July 08, 2019 9:58 AM
To: Lisa Greenwald-Swire <Greenwald-Swire@fr.com>; tmdoctc <TMDocTC@fr.com>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Tina Ingrande <ingrande@fr.com>; APS Incoming <APSI@fr.com>
Subject: RE: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Good afternoon Lisa,
After additional research and consideration, we will not require the disclaimer of “Taste Place”. With regards to the amendment to the identification, please let me know if your client needs additional time to respond and I will draft an examiners amendment with a priority action to allow for additional time to respond.
Thank you,
Marta
Marta Stadeli
Law Office 123
(571) 272-6747
From: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Wednesday, July 03, 2019 4:38 PM
To: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>; tmdoctc <TMDocTC@fr.com>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Tina Ingrande <ingrande@fr.com>; APS Incoming <APSI@fr.com>
Subject: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Dear Ms. Stadeli,
Thank you! This is under review with our client.
Wishing you a very happy 4th of July holiday!
Best,
Lisa
Lisa Greenwald-Swire :: Fish & Richardson P.C.
650 839 5198 direct :: lgs@fr.com
From: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>
Sent: Wednesday, July 03, 2019 1:20 PM
To: Lisa Greenwald-Swire <Greenwald-Swire@fr.com>; tmdoctc <TMDocTC@fr.com>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Tina Ingrande <ingrande@fr.com>; APS Incoming <APSI@fr.com>
Subject: RE: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Lisa,
Thank you for the quick response. At this time, I am following up only on the issue related to the identifications in Class 35. The suggested amended identification requires additional information from you before I am able to approve it. Please review the below suggestion including the highlighted areas that require additional input from you and let me know if you have any questions.
IDENTIFICATION: We need to amend the identification for the below applications related to International Class 35.
Trademark Application Nos. 88454424, 88454438, 88454449, 88454459
Suggested Amendment: IC 35: Loyalty, incentive and bonus program services; administration of a customer loyalty program which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.}; Arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program}; sales promotion through customer loyalty programs; business administration of consumer loyalty programs; business administration of consumer loyalty programs involving discounts or incentives; customer loyalty program services for commercial, promotional or advertising purposes; customer loyalty and incentive program services for commercial, promotional or advertising purposes; customer loyalty, discount and incentive program services for commercial, promotional or advertising purposes; promoting the goods and services of others by means of the issuance of loyalty rewards cards; administering a {indicate goods, e.g., wine, cheese, chocolate, etc.} club by means of selecting said goods based on consumer expectations and arranging periodic shipment to club members; arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program}; electronic billboard advertising; advertising and marketing services provided by means of social media; providing business information in the field of social media; digital advertising services.
I will follow-up next week in regards to the disclaimer after I have had more time to research the trademarks that you reference. Thank you again for your quick response and I look forward to hearing from you next week after the July 4th holiday.
Sincerely,
Marta
Marta Stadeli
Law Office 123
(571) 272-6747
From: Lisa Greenwald-Swire [mailto:Greenwald-Swire@fr.com]
Sent: Wednesday, July 03, 2019 2:36 PM
To: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>; tmdoctc <TMDocTC@fr.com>
Cc: Jon Jekel <jekel@fr.com>; Christine Chin <cchin@fr.com>; Tina Ingrande <ingrande@fr.com>; APS Incoming <APSI@fr.com>
Subject: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Dear Ms. Stadeli,
Thank you very much for your email. We are happy to accept the proposed mark descriptions and amendments to the identification of services.
However, we respectfully disagree that TASTE PLACE is descriptive and feel it does not require a disclaimer. In fact, we reviewed all filings with TASTE PLACE on the USPTO register and nearly every single hit did not include a disclaimer. We are hopeful this issue can be resolved, and look forward to receiving an Examiner’s Amendment. As always, I’m more than happy to discuss live.
Wishing you a very happy 4th of July holiday! Please note that our offices will be closed on Thursday, July 4 and Friday, July 5 in observance of the 4th of July holiday.
All the best,
Lisa
Lisa Greenwald-Swire :: Principal :: Fish & Richardson P.C.
500 Arguello Street Suite 500, Redwood City, CA 94063
650 839 5198 direct :: lgs@fr.com
fr.com :: www.FishTMCopyrightBlog.com
From: Stadeli, Marta <Marta.Stadeli@USPTO.GOV>
Sent: Wednesday, July 03, 2019 7:31 AM
To: Trademark Group - SV <TrademarkGroup-SV@fr.com>; tmdoctc <TMDocTC@fr.com>
Subject: Trademark Applications for "Impossible Taste Place" submitted for Impossible Foods, LLC.
Good morning Ms. Greenwald-Swire,
I have also reviewed the below trademark applications for “Impossible Taste Place” submitted for Impossible Foods, LLC.:
· 88454411 – Docket No. 387670220001
· 88454424 – Docket No. 387670220002
· 88454433 – Docket No. 387670220003
· 88454437 – Docket No. 387670223001
· 88454438 – Docket No. 387670223002
· 88454445 – Docket No. 387670223003
· 88454448 – Docket No. 387670213001
· 88454449 – Docket No. 387670213002
· 88454452 – Docket No. 387670223003
· 88454456 – Docket No. 387670214001
· 88454459 – Docket No. 387670214002
· 88454462 – Docket No. 387670214003
I have determined that we need to address several issues, as outlined below, before I can approve the marks for publication. If you agree to my suggestions below, please respond to this email with your approval and/or revisions and I will enter the amendments and approve these marks for publication.
MARK DESCRIPTIONS: We need to amend the mark descriptions for the non-standard character marks to include all the design elements. I suggest the below amended descriptions.
Trademark Application Nos. 88454437, 88454438, 88454445
Suggested Mark Description: The mark consists of the words “IMPOSSIBLE TASTE PLACE” in stylized fonts in a stacked formation with the word “IMPOSSIBLE” above the word “TASTE”, and the word “TASTE” above the word “PLACE”, and with “TASTE PLACE” in a larger font.
Trademark Application Nos. 88454448, 88454449, 88454452
Suggested Mark Description: The mark consists of an image of a salivating tongue in shades of pink and dark red, with a black mouth and with the words “IMPOSSIBLE TASTE PLACE” in stylized black fonts in a stacked formation to the right of the tongue image, with the word “IMPOSSIBLE” above the word “TASTE”, and the word “TASTE” above the word “PLACE”, and with “TASTE PLACE” in a larger font. The salivation consists of water drops in shades of light blue.
Trademark Application Nos. 88454456, 88454459, 88454462
Suggested Mark Description: The mark consists of the word “IMPOSSIBLE” in stylized black font above an image of a salivating tongue in shades of pink and dark red, with a black mouth, and on the tongue, following the curve of the tongue, the words “TASTE PLACE” in a stylized white font in a stacked formation with the word “TASTE” above the word “PLACE”. The salivation consists of water drops in shades of light blue.
DISCLAIMER: We need to add a disclaimer of “TASTE PLACE” as descriptive wording for the applied-for services in International Class 43 for the below applications:
Trademark Application Nos. 88454433, 88454445, 88454452, 88454462
IDENTIFICATION: We need to amend the identification for the below applications related to International Class 35.
Trademark Application Nos. 88454424, 88454438, 88454449, 88454459
Suggested Amendment: IC 35: Loyalty, incentive and bonus program services; administration of a customer loyalty program which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.}; Arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program}; sales promotion through customer loyalty programs; business administration of consumer loyalty programs; business administration of consumer loyalty programs involving discounts or incentives; customer loyalty program services for commercial, promotional or advertising purposes; customer loyalty and incentive program services for commercial, promotional or advertising purposes; customer loyalty, discount and incentive program services for commercial, promotional or advertising purposes; promoting the goods and services of others by means of the issuance of loyalty rewards cards; administering a {indicate goods, e.g., wine, cheese, chocolate, etc.} club by means of selecting said goods based on consumer expectations and arranging periodic shipment to club members; arranging and conducting incentive reward programs to promote the sale of {indicate goods or services that are the subject matter of the reward program}; electronic billboard advertising; advertising and marketing services provided by means of social media; providing business information in the field of social media; digital advertising services.
The remaining application (No. 88454411) has been moved forward in the process to be approved for publication.
Thank you in advance for your prompt response.
Sincerely,
Marta
Marta Stadeli
United States Patent and Trademark Office
Examining Attorney, Law Office 123
Email: marta.stadeli@uspto.gov
Phone: (571) 272-6747