NOTE TO THE FILE
SERIAL NUMBER: 88464081
DATE: 07/15/2019
NAME: jmccarthy1
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: Paul.Reilly
Sent: Saturday, July 13, 2019 6:13 PM
To: McCarthy, Joseph <Joseph.McCarthy
Cc: Suzanne.Hengl; Wykysha.Fulton
Subject: Re: USPTO Correspondence Ser. No. 88464081
Dear Mr. McCarthy,
Thank you for your email and patience. I just heard from our client. Your proposed amendment below is acceptable:
proceed to publication:
“International Class 20: Plastic hinged lid containers, namely, plastic containers and covers for the food industry.”
If you have any questions, please let us know.
With best regards,
P. Reilly
Sent from my iPhone
On Jul 13, 2019, at 7:48 AM, McCarthy, Joseph <Joseph.McCarthy> wrote:[EXTERNAL EMAIL]
Good morning Attorney Reilly,
I am happy to resolve this via an Examiner’s Amendment after the fact, but I am up against a deadline so I will need to issue a first Office action. Once you get a response from your client just let me know, and I will take care of it.
Have a good weekend,
Joe
From: Paul.Reilly
Sent: Friday, July 12, 2019 3:23 PM
To: McCarthy, Joseph <Joseph.McCarthy>
Cc: Suzanne.Hengl; Wykysha.Fulton; rosemary.cuciti; julie.albert@
Subject: FW: USPTO Correspondence Ser. No. 88464081
Dear Mr. McCarthy,
Thank you very much for your follow up communications. We have reached out to our client, but are still awaiting instructions. Once we are in a position to let you know if your proposed amendment is acceptable, we will contact you but at the moment we are not in a position to respond.
Should you have any questions in the interim, please let me know.
With best regards,
P. Reilly
Paul Reilly
From: McCarthy, Joseph <
Sent: Friday, July 12, 2019 2:59 PM
To: Cuciti, Rosemary <
Subject: FW: USPTO Correspondence Ser. No. 88464081
[EXTERNAL EMAIL]
Good afternoon Rosemary,
Thank you for all of your help! Below is a list of appointed attorneys to this matter. Just need a slight clarification on the ID and this application will be good to go.
Thank you,
Joe
Paul J. Reilly, Robert C. Scheinfeld, Daniel J. Hulseberg, Paul A. Ragusa, Neil P. Sirota, Eric J. Faragi, Sandra S. Lee, Steven P. Lendaris, Robert L. Maier, Jeremy Merling, Jennifer C. Tempesta, Julie B. Albert, Elizabeth Rucki and Tyler Beas
From: McCarthy, Joseph
Sent: Monday, July 08, 2019 9:47 AM
To: nytmdpt@
Subject: USPTO Correspondence Ser. No. 88464081
Good morning Attorney Hengl,
This is a follow up to a voicemail left with your office this morning. I am the Examining Attorney assigned to the above-referenced case, SENSATION. I have completed my initial examination and was hoping to resolve an outstanding issue via an Examiner’s Amendment.
Identification of Goods
Currently, the identification of goods needs a bit more specificity because the current wording is both overbroad and indefinite. While the specimen clearly directs us to the food industry, the wording alone would encompass certain goods in Class 21, namely, “Plastic containers, namely, cake boxes for household use.”
I recommend the following amendment to clear this up and allow this mark to proceed to publication:
“International Class 20: Plastic hinged lid containers, namely, plastic containers and covers for the food industry.”
Please feel free to reach out with any questions or concerns. Due to office deadlines, I will need to hear back from you by Friday, July 12.
All the best,
Joe