NOTE TO THE FILE
SERIAL NUMBER: 88500916
DATE: 04/27/2020
NAME: mvallillo
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 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:Great. Please proceed with the recommended change by examiners amendment.
Best,
/mark/
Mark A. Goldstein, Esq.
SoCal IP Law Group LLP
Sent via mobile
On April 27, 2020 7:43:05 AM "Vallillo, Melissa" <Melissa.Vallillo@USPTO.GOV> wrote:
Dear Mark:
Thank you for your explanation. The proposed amendment would be acceptable and would overcome the refusal. Please let me know if I can amend the identification as follows:
diamond blades, namely, diamond power saw blades for cutting concrete, stone and asphalt; diamond drilling bits for drilling of stone, concrete and asphalt; diamond coring bits for drilling of concrete, stone, and asphalt; all of the foregoing goods not for use in downhole, borehole and well drilling applications.
Best,
Melissa
Melissa Vallillo
Examining Attorney | Law Office 105
Phone: (571) 272-5891
From: Mark Goldstein <MGoldstein@socalip.com>
Sent: Thursday, April 23, 2020 7:51 PM
To: Vallillo, Melissa <Melissa.Vallillo@USPTO.GOV>
Cc: Anneliese Lomonaco <alomonaco@socalip.com>
Subject: RE: COUGAR - Serial No. 88500916 [D224.T19983]
Thank you for writing. The addition of a field limitation is acceptable. However, we cannot at this time agree to the removal of the drilling goods.
The cited blocking registration is, by definition of the kinds of goods recited, limited to an area that is not the same as what is recited in applicant’s goods, particularly with the addition of a field limitation. You mention DRILL STRING SHOCK ABSORBERS, but these are by definition limited to use in well drilling, so are likewise in a different field of use and sold to different kinds of purchasers for a different purpose from what is recited in the pending application, particularly with the added field limitation. See use according to the cited registration http://cougards.com/tools/st5-shock-tool/ The limitation to well drilling is made clear upon review of the definition and use of DRILL STRING. See, for example. http://en.wikipedia.org/wiki/Drill_string and http://www.petropedia.com/definition/1286/drill-string,
I propose using the following description of goods. If removal of the drilling items (highlighted) is required, I will need to seek approval from the applicant/client. Let me know.
diamond blades, namely, diamond power saw blades for cutting concrete, stone and asphalt; diamond drilling bits for drilling of stone, concrete and asphalt; diamond coring bits for drilling of concrete, stone, and asphalt; all of the foregoing goods not for use in downhole, borehole and well drilling applications.
Sincerely,
/mark/
Mark A. Goldstein, Esq.
SoCal IP Law Group LLP
+1 (805) 267-2256
From: Vallillo, Melissa <Melissa.Vallillo@USPTO.GOV>
Sent: Thursday, April 23, 2020 2:57 PM
To: USPTO <uspto@socalip.com>
Cc: Mark Goldstein <MGoldstein@socalip.com>; Anneliese Lomonaco <alomonaco@socalip.com>
Subject: COUGAR - Serial No. 88500916
Dear Mr. Goldstein:
The response for the above-referenced application has been reviewed. The amended identification does not overcome the refusal, as U.S. Registration No. 0947889 features “DRILL STRING SHOCK ABSORBERS” which is related to the drilling products identified in the registration. (Please note that this registration does not limit the use of the goods to that of downhole, borehole and well drilling applications.) In addition, applicant has not excluded downhole, borehole and well drilling applications for its products. The following amendment, which excludes downhole, borehole and well drilling applications, and deletes drilling products, would overcome the refusal and allow the mark to proceed to publication.
diamond blades, namely, diamond power saw blades for cutting concrete, stone and asphalt; the foregoing goods not for use in downhole, borehole and well drilling applications.
Please let me know if I can enter the proposed identification by Examiner’s Amendment.
Best,
Melissa
Melissa Vallillo
Examining Attorney | Law Office 105
Phone: (571) 272-5891