NOTE TO THE FILE
SERIAL NUMBER: 88480414
DATE: 08/20/2019
NAME: khansrajh
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 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: Samman, Luna [mailto:Luna.Samman@arentfox.com]
Sent: Thursday, August 15, 2019 2:26 PM
To: Hansrajh, Keton <Keton.Hansrajh@USPTO.GOV>
Cc: Mansilla, Johanna <Johanna.Mansilla@arentfox.com>
Subject: RE: TRADEMARK APPLICATION SERIAL NO. 88480414 (ZCM); RESPONSE REQUIRED BY 8/12/19
Keton,
Further to our exchange below, we would like to delete the following services from the above-referenced application in response to your Priority Action:
cost control, namely, cost containment in the field of fund investment and investment portfolio construction
We would appreciate you doing so by Examiner’s Amendment, but if you require an actual response, please let us know.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Hansrajh, Keton <Keton.Hansrajh@USPTO.GOV>
Sent: Monday, August 5, 2019 4:44 PM
To: Samman, Luna <Luna.Samman@arentfox.com>
Subject: RE: TRADEMARK APPLICATION SERIAL NO. 88480414 (ZCM); RESPONSE REQUIRED BY 8/12/19
Hi Luna,
I did see that prior registration and typically I defer to what prior examiners have let through in the past. However, I think the wording here, based on the ID manual, is unfortunately misclassified and it would be error to keep it in Class 036.
035-66
035
Cost containmentin the field of {specify area}
I went ahead and sent a Priority Action; let me know if you have any questions.
Best,
Keton Hansrajh
Trademark Examining Attorney, Law Office 128
U.S. Patent & Trademark Office
Phone: (571) 272-3396
From: Samman, Luna [mailto:Luna.Samman@arentfox.com]
Sent: Monday, August 05, 2019 4:05 PM
To: Hansrajh, Keton <Keton.Hansrajh@USPTO.GOV>
Cc: Mansilla, Johanna <Johanna.Mansilla@arentfox.com>
Subject: RE: TRADEMARK APPLICATION SERIAL NO. 88480414 (ZCM); RESPONSE REQUIRED BY 8/12/19
Keton,
Thank you for your email. We note that Reg. No. 5293863 lists the objected-to goods in Class 36. That said, if you need to maintain your refusal, please issue an Action as we will need to obtain instructions from our client and possibly pay for an additional class.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Hansrajh, Keton <Keton.Hansrajh@USPTO.GOV>
Sent: Monday, August 5, 2019 12:50 PM
To: Samman, Luna <Luna.Samman@arentfox.com>
Cc: Mansilla, Johanna <Johanna.Mansilla@arentfox.com>; TMDocket <TMDocket@ARENTFOX.COM>
Subject: TRADEMARK APPLICATION SERIAL NO. 88480414 (ZCM); RESPONSE REQUIRED BY 8/12/19
Importance: High
Dear Ms. Samman,
I am the examining attorney assigned to the above-referenced application, and there is an issue with the identification of goods and/or services that must be resolved before I can likely move the application forward.
IDENTIFICATION OF GOODS AND/OR SERVICES
Some of the wording is misclassified and semicolons should replace some of the commas. While the misclassified language can be deleted through an Examiner’s Amendment, adding another Class will require an additional filing fee before approving the mark for publication. Applicant is not required to add the additional class if the language is removed from the application.
The following amended identification of goods and/or services is suggested, if accurate, with changes highlighted in bold:
Class 035: cost control, namely, cost containment in the field of fund investment and investment portfolio construction
Class 036: Financial investment services, namely, financial management of investments; investment portfolio construction, namely, financial portfolio management; investment risk control, namely, financial risk management; financial risk management; fund investment consultation;
,investment consultation;,investment advice;,funds investment;,financial analysis and consultation; financial analysis and consultation, namely, providing macroeconomic financial analysis strategy advice; financial analysis and consultation based on a cost control model;cost control, namely, cost containment in the field of fund investment and investment portfolio construction;mutual fund investment; mutual fund brokerage; mutual fund distribution; mutual fund investment consultation, advice and analysis; providing information on the topics of mutual funds and mutual fund investment, fund investment consultation, investment consultation, investment advice, funds investment, financial analysis and consultation via a global computer network
With your authorization to do so, I can add the amended identification via Examiner’s Amendment before moving the application along for publication review. Alternatively, if you would like additional time, I can also prepare a Priority Action that will detail the identification requirement.
Please let me know by MONDAY, AUGUST 12 if you have any questions or would like to discuss further, and which of the above options are acceptable. If I have not heard from you by then, I’ll move forward with an Office Action formalizing the above issue.
Best,
Keton Hansrajh
Trademark Examining Attorney, Law Office 128
U.S. Patent & Trademark Office
Phone: (571) 272-3396