NOTE TO THE FILE
SERIAL NUMBER: 88493309
DATE: 03/19/2020
NAME: khardley
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:
X 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:X OTHER:
Hi Examiner Hardley,
Thanks for replying so quickly after leaving my voice message. Yes, if you could please make the change I proposed via examiner's amendment, that would be much appreciated.
Thanks very much,
Stephen C. Jensen
President & Senior Patent Attorney
Northwind IP Law, S.C.
(formerly Wilhelm Law, S.C.)
100 W. Lawrence St., Suite 320 · Appleton, WI 54911
Office: 920-831-0100 · Cell: 920-470-0000 · Fax: 920-831-0101
___________________________
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From: Hardley, Keisha [mailto:Keisha.Hardley@USPTO.GOV]
Sent: Thursday, March 19, 2020 9:34 AM
To: Stephen Jensen
Subject: RE: TM application USSN 88/493,309 for Clean Slate (our file A14.010-MRK)
Attorney Jensen,
Thank you for your original email and your subsequent follow-up email. I have reviewed your proposed language and think it may be acceptable. I am willing to resolve this matter via examiner’s amendment, obviating the need for a formal response. If you are fine with resolving this via examiner’s amendment, simply respond to this email indicating such.
Regards,
Keisha M. Hardley
Trademark Examining AttorneyLaw Office 112
United States Patent and Trademark Office
P: (571) 272-6945F: (571) 273-6945
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Stephen Jensen <sjensen@northwindlaw.com>
Sent: Friday, March 13, 2020 12:26 PM
To: Hardley, Keisha <Keisha.Hardley@USPTO.GOV>
Cc: Kerry Fox <paralegal2@northwindlaw.com>
Subject: RE: TM application USSN 88/493,309 for Clean Slate (our file A14.010-MRK)
Hello again Examiner Hardley,
Wondering if you have been able to consider my proposed amendment to the goods description (below). I assume it got through to you. Would you mind confirming that you received my original email?
Thank you,
Stephen C. Jensen
From: Stephen Jensen
Sent: Tuesday, March 10, 2020 9:49 AM
To: keisha.hardley@uspto.gov
Cc: Kerry Fox
Subject: TM application USSN 88/493,309 for Clean Slate (our file A14.010-MRK)
Good morning Examiner Hardley,
Thank you for taking the time to talk with me today about the above-pending application. In our conversation, I pointed out that the class 16 good description "Thermally-sensitive record materials, namely, thermally-sensitive paper and paper-like substrates" is currently used in at least 5 previously granted (and live) registrations. You however responded that the goods description requirements under the Nice convention are updated from time to time, and that under the current system an intended use (function) is required or strongly recommended.
I then suggested alternative "use" language, and you asked me to send the proposed language to you in an email so you could have more time to consider it. The use language I am proposing differs from the amendments proposed in the Office Action insofar as my proposed language is directed to the most fundamental aspect of the listed goods, rather than secondary aspects. The original description of the goods used the adjective "thermally-sensitive", and that is because the goods are all tailored for use with thermal printers. Hence my proposed modification to the goods description:
Thermally-sensitive record materials, namely, thermally-sensitive paper, paper-like substrates, and film substrates for use with thermal printers.
This modification is simple, does not broaden the description, is entirely in line with the original description, and is believed to be fully compliant with TMEP 1402 (describes a primary function of the goods).
If you could please consider this modification and let me know if you consider it acceptable, it would be much appreciated. Then I will plan to submit a suitable official response before the deadline.
Best regards,
Stephen C. Jensen
President & Senior Patent Attorney
Northwind IP Law, S.C.
(formerly Wilhelm Law, S.C.)
100 W. Lawrence St., Suite 320 · Appleton, WI 54911
Office: 920-831-0100 · Cell: 920-470-0000 · Fax: 920-831-0101
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