NOTE TO THE FILE
SERIAL NUMBER: 88527080
DATE: 01/09/2020
NAME: djohnson2
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: Cannella, Emilia F. <Emilia.Cannella@ropesgray.com>
Sent: Thursday, January 9, 2020 12:36 PM
To: Johnson, Don <Don.Johnson@USPTO.GOV>
Cc: USTrademarkMail <USTrademarkMail@ropesgray.com>; Han, Erica L. <Erica.Han@ropesgray.com>; Mollica, Nicole <Nicole.Mollica@ropesgray.com>
Subject: RE: requested EXAMINER'S AMENDMENT for application serial nos. 88/527,066 and 88/527,080
Dear Mr. Johnson,
Thanks for your response. Please enter the amendment of the identification of services by Examiner’s Amendment in both cases. Please also enter a disclaimer of exclusive rights to SYSTEMATIC TACTICAL TRADING with respect to App. No. 88/527,066.
What is the best way to update my attorney bar information and provide an attorney attestation?
Best regards,
Emilia
Emilia F. Cannella
ROPES & GRAY LLP
T +1 617 951 7170
Prudential Tower, 800 Boylston Street
Boston, MA 02199-3600
emilia.cannella@ropesgray.com
www.ropesgray.com
This message (including attachments) is privileged and confidential. If you are not the intended recipient, please delete it without further distribution and reply to the sender that you have received the message in error.
From: Johnson, Don <Don.Johnson@USPTO.GOV>
Sent: Thursday, January 02, 2020 11:09 AM
To: Han, Erica L. <Erica.Han@ropesgray.com>
Cc: Cannella, Emilia F. <Emilia.Cannella@ropesgray.com>; USTrademarkMail <USTrademarkMail@ropesgray.com>; Mollica, Nicole <Nicole.Mollica@ropesgray.com>
Subject: RE: requested EXAMINER'S AMENDMENT for application serial nos. 88/527,066 and 88/527,080
Ms. Han,
Applicant’s amendment of the identification of services is acceptable and can be entered via an examiner's amendment.
With respect to the disclaimer in application no. 8527066, I apologize for the inadvertent errors in identifying the required disclaimer. In addition to disclaiming the wording "TACTICAL TRADING”, applicant also must disclaim the word SYSTEMATIC because it describes a characteristic or feature of applicant's services.
The attached evidence from http://www.ahdictionary.com/word/search.html?q=systematic shows that "systematic” means “[w]orking or done in a step-by-step manner; methodical.”
The composite result – SYSTEMATIC TACTICALTRADING – means a methodical trading system that invests for the relatively short term based on anticipated market trends. Given that the identified services are “Financial services, namely, investment advisory services, investment management services, asset management services, and investment services, namely, funds investment; investment services in the nature of an investment fund,” the wording merely describes characteristics or features of applicant’ services.
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “SYSTEMATIC TACTICAL TRADING” apart from the mark as shown.
TMEP §1213.08(a)(i).
The amendment to the disclaimer also can be done via an examiner's amendment. Please advise me about whether applicant authorizes me to enter both amendments.
You may contact me by reply email. If I do not receive a response by Thursday, January 9, 2020, I will follow-up with an Office action.
Thank you in advance for your attention to these issues.
Donald Johnson
Examining Attorney
Law Office 104
571-272-7831
From: Han, Erica L. <Erica.Han@ropesgray.com>
Sent: Friday, December 27, 2019 10:12 AM
To: Johnson, Don <Don.Johnson@USPTO.GOV>
Cc: Cannella, Emilia F. <Emilia.Cannella@ropesgray.com>; USTrademarkMail <USTrademarkMail@ropesgray.com>; Mollica, Nicole <Nicole.Mollica@ropesgray.com>
Subject: requested EXAMINER'S AMENDMENT for application serial nos. 88/527,066 and 88/527,080
Dear Mr. Johnson,
I am writing regarding the Office Actions issued with respect to the above-referenced applications (for the marks TUDOR SYSTEMATIC TACTICAL TRADING and TSTT, respectively) of our client Tudor Investment Corporation. I am hoping we can resolve most of the outstanding issues through an Examiner’s Amendment.
1. Identification of Services:
Our client requests an Examiner’s Amendment to make the following change to the description of services in both of the above-referenced pending applications (new wording shown in bold below).
Financial services, namely, investment advisory services, investment management services, asset management services, and investment services, namely, funds investment; investment services in the nature of an investment fund
Please note that, as amended, this wording is identical to wording that was recently accepted by the USPTO in registrations owned by Tudor Investment Corporation. Please see Registration Nos. 5376322 and 5238030. Therefore, we respectfully request that you allow the same wording to proceed in the above-referenced applications as well.
2. Disclaimer:
With respect to our client’s application for TUDOR SYSTEMATIC TACTICAL TRADING (serial no. 88/527,066) we note that you have requested a disclaimer of the wording “STRATEGIC TACTICAL TRADING” and have also included evidence of the definition of the word “systemic”. However, neither the word “strategic” nor the word “systemic” appears in our client’s mark. Our client accepts a disclaimer of the wording “TACTICAL TRADING” and requests that the following statement be added by Examiner’s Amendment:
No claim is made to the exclusive right to use “TACTICAL TRADING” apart from the mark as shown.
3. U.S. Licensed Attorney Attestation and Bar Information
If it is possible to resolve the above two issues through Examiner’s Amendment, then we request that we provide the necessary U.S. licensed attorney information via telephone to resolve all issues and allow our client’s applications to proceed to publication. Otherwise, if you prefer that we provide this information through an Office Action response, please let us know and we can do so.
Please do not hesitate to call me at 617-951-7519 if you have any questions or wish to discuss further. Thank you for your consideration.
Kind regards,
Erica Han
Erica L. Han
ROPES & GRAY LLP
T +1 617 951 7519
Prudential Tower, 800 Boylston Street
Boston, MA 02199-3600
Erica.Han@ropesgray.com
www.ropesgray.com
This message (including attachments) is privileged and confidential. If you are not the intended recipient, please delete it without further distribution and reply to the sender that you have received the message in error.