NOTE TO THE FILE
SERIAL NUMBER: 88462471
DATE: 02/12/2020
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: Wallace, Kevin M. <kwallace@bakerlaw.com>
Sent: Tuesday, February 11, 2020 10:12 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>; BH IP Docket <bhipdocket@bakerlaw.com>
Subject: RE: Re Trademark Application for SONY PICTURES STUDIOS #88462471, Docket 041279.3218
Dear Examiner Kon,
Our client advised us that “trading cards” should remain in class 16 and be amended to “collectible trading cards.” Please issue an examiner’s amendment to this effect at your earliest convenience.
If you need anything further, please let me know.
Regards,
Kevin
From: Wallace, Kevin M.
Sent: Thursday, February 06, 2020 2:44 PM
To: 'Kon, Elissa Garber' <ElissaGarber.Kon@USPTO.GOV>
Cc: Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>; BH IP Docket <bhipdocket@bakerlaw.com>
Subject: RE: Re Trademark Application for SONY PICTURES STUDIOS #88462471, Docket 041279.3218
Dear Examiner Kon,
We should be able to provide instructions by close of business Wednesday, February 12. I will let you know as soon as we have instructions from our client.
Regards,
Kevin
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Thursday, February 06, 2020 2:17 PM
To: Wallace, Kevin M. <kwallace@bakerlaw.com>
Cc: Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>; BH IP Docket <bhipdocket@bakerlaw.com>
Subject: Re Trademark Application for SONY PICTURES STUDIOS #88462471, Docket 041279.3218
Dear Kevin
Thank you for your reply. Is it possible to get clarification by next Wednesday?
/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: Wallace, Kevin M. <kwallace@bakerlaw.com>
Sent: Thursday, February 6, 2020 1:28 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Cc: Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>; BH IP Docket <bhipdocket@bakerlaw.com>
Subject: RE: Re Trademark Application for SONY PICTURES STUDIOS #88462471, Docket 041279.3218
Dear Examiner Kon,
I work with Mr. Horowitz on trademark matters for this client at Baker & Hostetler LLP. We will confer with our client on the clarifications sought below. By when do you need a response before you must issue an office action?
I look forward to hearing from you.
Regards,
Kevin
Begin forwarded message:From: "Kon, Elissa Garber" <ElissaGarber.Kon@USPTO.GOV>
Date: February 5, 2020 at 1:20:12 PM EST
To: BH IP Docket <bhipdocket@bakerlaw.com>, "Horowitz, Robert B. G." <rhorowitz@bakerlaw.com>, "Cupito, Jo-Ann" <jcupito@bakerlaw.com>
Subject: Re Trademark Application for SONY PICTURES STUDIOS #88462471, Docket 041279.3218
[External Email: Use caution when clicking on links or opening attachments.]
Dear Mr. Horowitz
I approved this application for publication on 1/22/2020. The file was returned to me to correct one item in the description of goods. I can make this correction via examiner’s amendment based on your reply to this email or a phone call.
The end of Class 16 includes “trading cards.” The applicant must say the intended use for the trading cards to determine classification. “Collectible trading cards,” “sports trading cards” and “trading cards other than for games” are in Class 16, while “trading cards for games,” and “trading card games”, are in Class 28.
The application includes Classes 16 and 28, so the applicant may amend “trading cards” to any or all of the above suggestions without incurring additional filing fees. Please tell me how the applicant wishes to amend “trading cards.”
I apologize for any inconvenience in making this requirement now. Please let me know how you want to proceed or if you have questions. 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.