NOTE TO THE FILE
Sent to TICRS as Serial Number: 88569681SERIAL NUMBER: 88569687
DATE: 11/06/2019
NAME: kmoninghoff
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:X OTHER:
From: Moninghoff, Kim
Sent: Wednesday, November 6, 2019 3:59 PM
To: Agueda, Lisa T. <lagueda@omm.com>; Miller, Mark E. <markmiller@omm.com>
Cc: IP Calendar Dept <IPCalendarDept@omm.com>; SFIPDocket <SFIPDocket@OMM.com>; Pink, Scott W. <spink@omm.com>
Subject: RE: Trademark Application Nos. 88569681 BCCI BUILDERS, 88569687 BCCI - please response by Tuesday, 11/12
Thank you. You should receive both EAs later today.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Agueda, Lisa T. <lagueda@omm.com>
Sent: Wednesday, November 6, 2019 3:58 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>; Miller, Mark E. <markmiller@omm.com>
Cc: IP Calendar Dept <IPCalendarDept@omm.com>; SFIPDocket <SFIPDocket@OMM.com>; Pink, Scott W. <spink@omm.com>
Subject: RE: Trademark Application Nos. 88569681 BCCI BUILDERS, 88569687 BCCI - please response by Tuesday, 11/12
Ms. Moninghoff -
I am a trademark attorney at O’Melveny. I work with Mr. Miller on the respective applications. You have our consent to amend the mark description for BCCI BUILDERS and to add the claim of ownership to the BCCI application.
Thank you for raising this with us via Examiner’s Amendment. If you need anything else, please do not hesitate to contact me directly.
Best,
Lisa
O’Melveny
Lisa Teixeira Águeda
O: +1-415-984-8877
O’Melveny & Myers LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
This message and any attached documents contain information from the law firm of O'Melveny & Myers LLP that may be confidential and/or privileged. If you are not the intended recipient, you may not read, copy, distribute, or use this information. If you have received this transmission in error, please notify the sender immediately by reply e-mail and then delete this message.
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Wednesday, November 6, 2019 12:49 PM
To: Miller, Mark E. <markmiller@omm.com>
Cc: IP Calendar Dept <IPCalendarDept@omm.com>; SFIPDocket <SFIPDocket@OMM.com>; Agueda, Lisa T. <lagueda@omm.com>
Subject: Trademark Application Nos. 88569681 BCCI BUILDERS, 88569687 BCCI - please response by Tuesday, 11/12
[EXTERNAL MESSAGE]
Mr. Miller,
I’ve been assigned to review these two trademark applications. Before I can approve the marks for publication, they each have an issue that must be addressed. We can resolve these issues by Examiner’s Amendment if you provide your consent.
For the first one, the mark description needs some amendments because the current description includes the terms “stacked” and “angle,” which do not appear to accurately describe the position of the wording. We can simplify the description to the following, if you consent:
The mark consists of the stylized wording “BCCI BUILDERS” combined with a design of a vertical rectangle.
The first application includes a claim of Registration No. 3882386, BCCI BUILDERS, in standard-character form, which according to our records is owned by BCCI Construction Company, not the applicant (STO Building Group, Inc.). Thus, because the first application includes this claim, I don’t need to refuse this application under Section 2(d).
However, the second application, for BCCI, did not include this claim. Since the applicant is the same in both applications, there shouldn’t be a 2(d) issue with the BCCI mark. However, to make sure that is clearly reflected in the record, I need your consent to add the same claim to the record for the second application:
Applicant is the owner of U.S. Registration No. 3882386.
If you consent to this, I also plan to attach a copy of the BCCI BUILDERS application to the Examiner’s Amendment to show that the claim is supported by a signed declaration, which is needed to avoid Section 2(d) refusals in cases like this.
If you consent to the amendments discussed above, you can let me know by reply email or phone and I will enter the amendments by Examiner’s Amendment and approve these marks for publication. If you have any questions, please let me know.
If I don’t hear back from you by the end of the day Tuesday (11/12), I will send you formal Office actions with the mark description requirement and Section 2(d) refusal, respectively. The refusal will include an advisory regarding overcoming the refusal with a claim of the prior registration. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.