NOTE TO THE FILE
SERIAL NUMBER: 88457474
DATE: 03/10/2020
NAME: ekon
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
email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPS
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Tuesday, March 10, 2020 5:43 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Thank you so much, Elissa.
We look forward to receiving the Examiner’s Amendment shortly.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
From: Kon, Elissa Garber
Sent: Tuesday, March 10, 2020 5:41 PM
To: Sunny Nassim <sunny@jrsnd.com>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Acceptable.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Tuesday, March 10, 2020 4:00 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
This is great news, Elissa. Thank you for confirming.
As far as the proposed language, the client would like the following language if acceptable:
Red and near-infrared light home-use therapeutic devices, namely, hand held and free-standing light panels used to facilitate augmented health, wellness, longevity and beauty enhancement by reducing inflammation in the body, improving blood flow and microcirculation, reducing pain, improving overall skin health, accelerating fat and weight loss, improving the health of nervous system, improving heart and brain health, improving sleep, reducing anxiety and depression, boosting the immune system, improving muscular performance and recovery and improving overall energy levels
Please confirm that you will do the Examiner’s Amendment and that the application will now move forward. Thank you for all of your assistance with this matter.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Tuesday, March 10, 2020 11:05 AM
To: Sunny Nassim <sunny@jrsnd.com>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Hi, Sunny
The earlier registration, No. 4379964, has been cancelled. Therefore, the likelihood of confusion refusal is hereby withdrawn.
I propose amending the description of goods to the following, if accurate, based on earlier conversations:
Class 10: Red and near-infrared light home-use therapeutic devices, namely, hand held and free-standing light panels used to facilitate augmented health, wellness, longevity and beauty enhancement by improving muscular performance and recovery, accelerating fat and weight loss, reducing pain, improving overall skin health, reducing inflammation in the body, improving the health of nervous system, improving heart and brain health, improving sleep, reducing anxiety and depression, boosting the immune system and improving overall energy levels
If that is not acceptable, please feel free to propose amended wording. If that wording is acceptable, kindly let me know and I will enter it by examiner’s amendment and move the application forward. Thank you!
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Monday, March 9, 2020 8:18 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Thank you, Elissa. Last we spoke, you mentioned that March 7th was the actual cancellation date (inclusive of the grace period) but we look forward to receiving an update when you have one. Take care.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Monday, March 09, 2020 2:10 PM
To: Sunny Nassim <sunny@jrsnd.com>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Hi, Sunny, I will check internally to let you know how long we have to wait internally before cancelling the registration. I’ll get back to you shortly. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Monday, March 9, 2020 5:06 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474 - Cancellation of Cited Mark
Importance: High
Dear Elissa,
I hope this email finds you well. Based on our conversations last month regarding my client’s “BIOLIGHT” Appl. Serial No. 88457474, I wanted to follow up since the registrant (Bioscan, Inc.) of the cited conflicting mark “BIOLIGHT” Reg. No. 4379964 did not file the required Section 8 declaration, and therefore, the mark was to be cancelled on March 7, 2020.
We checked the USPTO database today and the mark is still active. Can you please assist in this matter? Thank you.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Tuesday, February 18, 2020 3:10 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
Hello Elissa,
I wanted to follow up our telephone call and my email from last week. I look forward to hearing back from you soon. Take care.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Sunny Nassim
Sent: Tuesday, February 11, 2020 2:26 PM
To: 'Kon, Elissa Garber' <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
Hello Elissa,
Thank you so much for your time. Based on our conversation, please see the proposed ID amendment as follows:
Home-use red and near-infrared therapeutic light-emitting diode (LED) handheld and free-standing light panels for beauty enhancement, namely wrinkle reduction and improving skin tone, reduction of inflammation, enhancement of athletic performance and recovery, reduction of anxiety and depression, improvement of sleep and boosting of the immune system, and improvement of overall energy levels.
I look forward to hearing back from you soon. Take care.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Monday, February 10, 2020 8:23 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Sunny Nassim <sunny@jrsnd.com>; Claudia Schiantarelli <claudia@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
Would you like to speak at 2pm PST/5 pm EST?
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Monday, February 10, 2020 4:58 PM
To: Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
What time works for you tomorrow?
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Monday, February 10, 2020 7:44 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
Dear Elissa,
I wanted to follow up to see when we can schedule a call to discuss the client’s Appl. Serial No. 88457474 for “Biolight” in Class 10. Thank you.
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909
CONFIDENTIAL AND PRIVILEGED COMMUNICATION: This e-mail transmission, and any documents, files or previous e-mail messages attached to it, may contain confidential information that is legally privileged. If you are not the intended recipient, or person responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of any of the information contained in or attached to this message is STRICTLY PROHIBITED. Interception of e-mail is a crime under the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521 and 2701-2709. If you have received this transmission in error, please immediately notify me by replying to this e-mail or by telephone at 310.446.9900, and destroy the original transmission and its attachments without reading them or saving them to disk.
From: Sunny Nassim <sunny@jrsnd.com>
Sent: Tuesday, February 04, 2020 1:44 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Claudia Schiantarelli <claudia@jrsnd.com>; Sunny Nassim <sunny@jrsnd.com>
Subject: RE: Biolight, Inc.'s Application for "BIOLIGHT" (Word) in Class 10 Serial No. 88457474
Ok, it is now submitted. Let me know when we can discuss this week. Thank you!
Yours truly,
Sunny S. Nassim, Esq.
1880 Century Park East, Suite 900
Los Angeles, CA 90067
Tel: 310.446.9900 Ext. “230”
Fax: 310.446.9909